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LIBRARY OF CONGRESS. 

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UNITED STATES OF AMERICA. 



HAND B06'K-' ' 

OF ^ 

Patent Law 

FOR 

PATENT OWNERS. 

BY 

CHAS. B. MANN, 

Patent Attorney and Counselor. 



SECOND EDITION 




Baltimore, Md. 
Published by Mann & Co. 

Solicitors of Patents. 






Entered according to Act of Congress, in the year 18S4, by 

IS^A-lSTKr &c CO. 

In the Office ot the Librarian of Congress at Washington. 

First Edition 1878. Second Edition 1888. 



-^ 



\ 




CHAS. B. MANN, Patent Attorney, 
Baltimore, Md. 



NOTE. 

The citations of authorities given in the following 
pages are confined, for the most part, to those found 
in the Official Gazette of the United States Patent 
Office, published weekly ; the number of volume and 
page is given, where the full decision may be found — 
(marked for instance, 11 0. Gr., 551.) This source, 
for full information concerning patent decisions, is 
more readily accessible to inventors than any other. 

Persons desiring the full decision in any of these 
Patent suits, can procure copies of same through 
MANN & CO., 

Patent Attorneys, 

Baltimore, Md. 



INTRODUCTION. 



Inventors and other persons interested in Patents are 
constantly experiencing the need of information and 
advice as to their rights under the law ; questions, 
new to them, are daily arising, which they find diffi- 
culty in solving. 

This little work has been prepared for them — the 
endeavor being constantly made to state the law in a 
clear and simple manner, thus adapting it more espe- 
cially for practical business men than for lawyers. 
The patent statutes form the basis of a distinct depart- 
ment of law, in which no lawyer, however able, is 
competent to advise unless he has given it particular 
attention. While it has been the aim to correctly 
present the law bearing on the subjects that are most 
important to rightfully imderstand, it is quite possible 
that some technical inaccuracies may have been made ; 
but it is belie v^ed persons interested in Patents will 
here find reliable information in regard to the law and 
the latest judicial decisions that will enable them to 
comprehend their rights and the remedies that are 
available for an invasion thereof. 

CHAS. B. MANN, 

Patent Attorney, 

Baltimore, Md. 



THE PATENT SYSTEM— 

Of the United States is based upon article 1, section 
8, of the Constitution, which says : 

' ' The Congress shall have pow^ * * * * to 
promote the progress of science and useful arts by 
securing, for limited times, to authors and inventors, 
the exclusive right to their respective writings and 
discoveries." 

It must be admitted the statesmanship and far-seeing 
sagacity of the fathers of our republic was strikingly 
manifested in their appreciation of the value of new 
inventions. With promptness and skill they met the 
new necessities that had arisen by setting a premium 
upon inventions, by securing to inventors a property- 
right in the fruits of their creative genius. 

The wisdom of their course has been demonstrated 
by the fact that in much less than one hundred years 
of Patent-law encouragement, the inventors of the 
United States alone have done more to promote the 
power and prosperity of mankind than all the rest of 
the world accomplished during many previous cen- 
turies. 

AN inventor's rights. 

It would be an unprofitable and unneccessary task 
to go into a discussion of the question of man's natural 
property in his own original ideas. It is sufficient to 



10 

recognize the fact that as long as these new ideas are 
locked up in his own breast they are likely to be of 
little benefit to himself and certain to be of none to 
others. To be of use they must, as a rule, be dis- 
closed ; and when once disclosed, they can be protected 
as individual property only through the medium of 
positive law. 

A learned judge said : "An inventor has no right 
to his invention at commo7i laiv. He has no right of 
property in it originally. The right which he derives 
is a creature of the statute and of grant, and is sub- 
ject to certain conditions incorporated in the statutes 
and in the grants. If to-day you should invent an 
art, a process, or a machine, you have no right at 
common law, nor any absolute natural right, to hold 
that invention for seven, ten, fourteen, or any given 
number of years, against one who should invent it to- 
morrow, without any knowledge of your invention, 
and thus cut everybody else off from the right to do 
to-morrow what you have done to-day. ' ' 

Judge Swayne, in giving a decision of the U. S. 
Circuit court for the Northern District of Ohio, at the 
April term, 1874, said ; " Inventors are a meritorious 
class of men. They are not monopolists in the odious 
sense of that term. They take nothing from the pub- 
lic. They contribute largely to its wealth and com- 
fort. Their patents are their title-deeds, and they 
should be construed ui a fair and liberal spirit to ac- 
complish the purpose of the laws under which they are 
issued." 

Mann & Co., Patent Attorneys. 



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The right of the patentee is different from the right 
which any. other propert;^ owner has; the invention 
is not a physical thing which he may stand over and 
watch, but depends entirely on the law for protection. 

A PATENT IS A CONTRACT. 

The entire system of protecting new inventions by 
letters patent is declared by the courts to rest upon the 
same principles as a contract. The public, acting 
through its representative, the Government, says to 
the inventor, ' ' give us new and useful improvements 
in the useful arts, and we will pay you for them ; not 
in cash down, (for we cannot at first tell the value of 
an invention, ) but by giving you or your legal repre- 
sentative, for a certain specified time, an exclusive 
chance to make money out of it," This, in simple 
English, is the sum and substance of the patent law. 



Baltimore, Md. 



PATENT BENEFITS vs. PATENT BURDENS. 



Under this head will be briefly considered the two 
sides of the Patent question, so far as the Patent sys- 
tem promotes or retards the onward progress to a 
higher civilization. 

Of course, complaints and criticisms have been di- 
rected against the Patent laws and their administra- 
tion, some of them perhaps measurably just, since an 
absolutely perfect system is hardly to be looked for, 
but most of them, it is believed, fallacious, and arising 
from a misapprehension of the true principles of the 
law. 

But there are many earnest and honest men who, 
misunderstanding the nature and effects of Patents 
for useful improvements, are opposed to the system 
and whose antagonism has been made manifest in 
unmistakable terms. 

PATENTS NOT AN OPPRESSIVE MONOPOLY. 

The opposers have apparently such a superficial 
view as not to distinguish the difference between a 
temporary Patent privilege and an oppressive mo- 
nopoly. 

A monopoly in its legal and odious sense, implies 
the taking away of some right from the many, for the 
benefit of particular individuals. 

Mann & Co., Patent Attorneys. 



13 

When a powerful corporation, by crooked devices, 
obtains a large share of the public domain, that may 
be an "odious monopoly," for the lands which had 
once belonged to the people are taken from them with- 
out due recompense. But when a person, instead of 
appropriating what was previously known or used, 
creates new property, then that newly-created property 
should, by common consent, belong to him. Mani- 
festly, then, the term " monopoly " is not applicable 
to letters-patent for new inventions ; that cannot be 
tahen from the public, which the public has not ; a 
new invention can become , public property, only by 
communication from the inventor ; until so communi- 
cated voluntarily, it remains the secret property of 
the latter. 

This view of the case shows that it is just and right 
that a new and useful invention should be paid for 
by the public, in proportion to its proveij value to the 
public. 

A Patent simply protects the inventor for a limited 
time in the possession of what, but for him, would 
.have had no existence. The principle is the same as 
that which protects all property, except that the in- 
ventor has less protection than any other person who 
creates it. 

A compaeison:. 

The following comparison, for the most part, ap- 
peared in the columns of a well-known scientific 
journal : 

But, it is objected, on the part of some that the 
owners of Patents have been and are unduly favored 
Baltimore, Md. 



14 

in the struggle for existence. They have been too 
much protected, to the grievous injury of the users of 
their inventions, particularly the agricultural classes. 

Let us see : A young man determines to be a farmer, 
he strikes out West for the public lands and clears a 
farm. For the work so done, or for a merely nominal 
payment, the general government grants him a sec- 
tion of land. The grant is absolute and for all time. 
Meanwhile another young man is devoting his energies 
to perfecting some useful device. He succeeds, and 
the general government gives him the right to make 
and sell his invention — for all time ? No ; but for a 
period of seventeen years only. It may be that the 
invention is so important and useful that, before the 
life of the Patent expires, the inventor has amassed a 
noble fortune ; but when the Patent expires, the in- 
vention becomes common property — free for every 
man to use. 

Let us see how our pioneer farmer has fared mean- 
while ; The title made out, the land is his to use or 
let alone as he will. He can let it lie unproductive, 
not merely for seventeen years (like an undeveloped 
Patent), but for any time he may choose ; and he can 
keep anyone else from cultivating it except on such 
terms as he may dictate. His monopoly is, then, 
fully as complete while it lasts as a patentee's, and it 
lasts forever. Suppose he has made a happy selection 
and has chosen a valuable site for water power, or that 
the land is found to contain precious metals, or that 
it happens to be where a great commercial centre is 
destined to be located. He, unlike the inventor, has 
Mann & Co., Patent Attorneys. 



15 

added nothing to the world's wealth, yet purely- 
through the necessities of others he may gain great 
wealth by what is called the natural rise in value of 
real estate, and the law defends his title. 

Thus it is seen the patentee's monopoly is limited, 
and in a few years his invention becomes public prop- 
erty, whereas the landowner's monopoly is perpetual. 

The worst possible cases of patent ' ' oppressions ' ' 
are trivial compared with the burdens which rising 
communities have had to bear through speculations in 
land. Shall we say therefore, that private ownership 
of land is injurious and ought to be abolished ? Or, 
because the great landed fortunes have not fallen to 
the working pioneers, that the land laws of our coun- 
try have not encouraged emigration or hastened the 
development of the country ? 

BENEFITS THAT ARE ACCRUING. 

The history of this country, as impartially read to- 
day, shows that it is to the inventor more than to the 
farmer that our progress is due — to men like McCor- 
mick, of reaper fame, who have spent their days and 
nights, and their money, in developing nfew machines 
which have become a blessing to the world. 

Under the operation of our Patent law the manufac- 
turers of this country are steadily and surely laying 
the foundation for a large export business to all parts 
of the world. 

Sir William Thomson, one of the English Commis- 
sioners to our Centennial Exposition, (1876) , went home 
and in plain words told his countrymen in authority 
Baltimore, Md. 



16 

that unless European countries speedily amended i 

their Patent laws they must understand that they J 

would lose their manufacturing supremacy, and that '' 
the United States would take it from them. 

It has been truthfully said that a peculiarity of our 
Patent system is, that is is not for the capitalist, not 
for a favoredifclass, but is for everybody ; it opens a ;j 
career to whoever has talents to seize it, anyone hav- ]\ 
ing the capacity may reap the reward. 

HOW IT WORKS IN OTHER COUNTRIES. 

Switzerland has never had a Patent law, and not- 
withstanding her population of artisans, has not con- 
tributed one great invention to the world in two 
hundred years ; and, were it not for improvements 
which they have appropriated from countries where 
Patent laws exist, her manufacturers would be as 
stereotyped as the manual methods she employs. It is 
said that the Swiss Commissioners to our Oentenni a 
Exposition went home almost in despair at our pro- 
gress in the arts which hitherto they had excelled in ; 
and recognizing our Patent system as the wonderful 
stimulus, at once recommended to the Swiss Federal 
Council the adoption of a Patent law. 

Holland stands alone as the country which has abol- • 
ished Patents. This occurred in 1869. "Such a land 
as Holland," says an American writer, "exists no- 
where else. It is not merely the most singular of 
kingdoms, it is the only one of its kind. You may 
travel the world over and yet be unable to form any 
Mann & Co., Patent Attorneys. 



17 

conception of the Netherlands. You may live there 
your life long, and form no adequate idea of the re- 
mainder of the globe, 

"It is not at all unlikely that among a people so 
conservative and seK-satisfied as the Hollanders, Pat- 
ent laws did not promote industry. The people, 
though robust, brave and industrious, appear to have 
a horror of innovation, as is attested by their obstinate 
adherence to sleighs, in place of wheeled vehicles, for 
drawing heavy loads over rough pavements, and the 
wooden shoes still worn by both men and horses. 

"It may be very true that the Dutch Patent law 
did not promote the progress of the useful arts in 
Holland ; but the Dutch law was so restricted and 
selfish in its character that it would scarcely be ex- 
pected to promote any public advancement in the 
arts, one of its clauses being to the effect that a native 
forfeited his patent if he secured Ms invention in any 
other country.^' 

The opposers of Patent laws may be referred to the 
example of Holland, a country where old methods are 
preferred, where progress is unknown, where the lim- 
ited manufacturing interests are at a standstill, and 
the prominent products are gin, tulips and cheese. 

Undoubtedly the soundest Patent law is that which 
treats inventors with the most liberality, on the plain 
grounds that the more liberal the law the more it is 
likely to answer its public purpose of promoting the 
progress of the useful arts, by inducing the production 
and disclosure of new inventions. 
Baltimore^Md. 



18 



OUGHT THE PATENT LAW TO BE CHANGED? 

Under the guise of araeudraents looking to the cor- 
rection of real or pretended evils in the working of 
the patent laws, Congress is annually beset with bills 
that would practically nullify the most beneficent 
features of the patent system. 

All sorts of excuses are given for the proposed leg- 
islation, which is generally suggested either by the 
urgency of private interests, by aggrandizing corpora- 
tions, or the narrow-minded views of demagogues ; the 
public good is seldom at the bottom of these proposi- 
tions to amend the Patent Laws. 

To lessen in any way the stimulus which the law 
gives by protecting patentees and manufacturers 
under patent rights, is to strike at the very heart of 
the system as a means of encouraging useful inven- 
tions. If inventors cannot enjoy the fruits of their 
labors in this direction, they will naturally turn their 
thoughts into other channels, and that would be 
equivalent to a suspension of all progress in American 
arts, and our speedy decadence as a manufacturing 
nation. And seeing how largely our agricultural in- 
terests are bound up with and dependent upon our 
manufacturing interests, it is obvious that our pre- 
eminence in this field also would not be long sustained, 
if our inventors were to lessen their efforts. 

If our national industrial prosperity is to continue, 
we must have new inventions ; and to get new inven- 
tions we must pay for them. Everything that is 
worth having must be paid for ; and the payment 
Mann & Co., Patent Attorneys. 



19 

that is made to an inventor in the shape of a Govern- v 
ment Patent is the fairest of all payments, — not only 
so, but it is the cheapest possible way for the people 
to become possessed of the advantages resulting from 
better means and methods. 

It will be well for our legislators not to forget that 
not only must there be an inducement for the inven- 
tor to continue to originate, but there must be also an 
inducement for the capitalist to devote his money and 
business capacity to the development and manufac- 
ture of new inventions. Wirthout the security which 
a patent affords, capitalists would refuse to put their 
means in a new invention. 

Patents invite capital. By a poor man's invention 
and capital, a division of labor and labor-saving ma- 
chinery can be adoptod, and without these economical 
production is impossible. 

The Patent system of the United States is doubtless 
the best in the world, and ought not to be materially 
changed. 



Baltimore, Md. 



THE PATENT LAW. 

(The sections here numbered refer to the U. S. Re- 
vised Statutes adopted June 22, 1874). 

ESTABLISHMENT OF THE PATENT OFFICE. 

Sec. 475. There shall be in the Department of the 
Interior an office known as the Patent Office, where 
all records, books, models, drawings, specifications and 
other papers and things pertaining to Patents shall be 
safely kept and preserved. 

RESTRICTIONS UPON OFFICERS AND EMPIiOYES. 

Sec. 480. All officers and employes of the Patent 
Office shall be incapable, during the period for which 
they hold their appointments, to acquire or take, di- 
rectly or indirectly, except by inheritance or bequest^ 
any right or interest in any Patent issued by the office. 

COPIES OF RECORDS, &C., OF PATENT OFFICE. 

Sec. 892. Written or printed copies of any records*' 
books, papers or drawings belonging to the Patent 
Office, and of letters patent authenticated by the seal 
and certified by the Commissioner or Acting Com- 
missioner thereof, shall be evidence in all cases wherein 
the originals could be evidence ; and any person mak- 
ing application therefor, and paying the fee required 
by law, shall have certified copies thereof. 

PRINTED COPIES OF SPECIFICATIONS AND DRAWINGS OF 
PATENTS. 

Sec. 894. The printed copies of specifications and 
drawings of patents, which the Commissioner of Pat- 
ents is anthorized to print for gratuitous distribution, 

Mann & Co., Patent Attorneys. 



21 

and to deposit in the capitols of tlie states and Terri- 
tories, and in the clerk's office of the District Courts, 
shall; when certified by him and authenticated by the 
seal of his office, be received in all courts as evidence 
of all matters therein contained. 

WHO MAY OBTAIN PATENTS. 

Sec. 4,880 provides : "That any person who has 
invented or discovered any new and useful art, ma- 
chine, manufacture or composition of matter, or any 
new and useful improvement thereof, not known or 
used by others in this country, and not patented or 
described in any printed publication in this country, 
before his invention or discovery thereof, and not in 
public use or on sale for more than two years prior to 
his application, unless the same is proved to have been 
abandoned, may, upon payment of the duty required 
by law, and otlicr due proceedings had, obtain a patent 
therefor." 

It is first to be noticed in this section that the term 
" any person " includes citizens and aliens — males, 
females and minors — ^who in reference to the patent 
laws stand upon precisely the same footing. 

" By the law of New York a married woman may 
own property of every description in the same manner 
as if she were a fennne sole, and under the U. S. Re- 
vised Statutes, suits in equity for infringement of 
Letters- Patent must be brought by the party in inter- 
est in his or her own name, and such right cannot be 
delegated to others to bring suit in their own names 
when the suit is not in any way for tiieir benefit. 
Therefore, the husband, having no legal interest in 
the patent or the suit, is neither necessary nor a 
j)roper party to be joined." 

LoriUard vs. The Standard Oil Co., 17 0. G., 1507. 
Baltimore, Md. 



22 



WHAT IS PATENTABLE. 

1 . A new process or niethotl relating to any of th<*. 
industrial arts. 

2. A machine, tool or implement, or any improve- 
ment of the same. 

?>. A now article of manufacture, or an improve- 
ment. 

4. A composition of matter or an improvement. 

5. A new design of an ornamental character. 

WHAT IS NOT PATENTABLE. 

Patents arc not granted for an effect or a result, 
that is, a single Patent will not be granted for all 
ways of prorlucing a certain result, to do so would be 
to grant a Patent for the " principle " in the sense of 
an elementary physical law or fact ; a Patent, then, 
cannot be obtained for the function or abstract effect 
of a machine. 

Patents are not granted for any thing that has a 
noxious or hurtful tendency, or which would be inju- 
rious to the morals, health or good order of society. 

" A Patent will not be sustained if the claim is for 
a result, a principle, an idea, or any other mere ab- 
straction." 

Fuller & Barnum vs. Yentzer & Scates, 1 1 0. G., 551. 

WHAT IS INVENTION.. 

Merely conceiving the idea of an improvement or 
machine is not an " invention " or " discovery." The 
invention must have been reduced to a practical form 
either by the construction of the machine itself, or by 
such disclosure of its exact character that a mechanic, 
Mann & Co., Patent Attorneys. 



23 

or one skilled in tlie art to which it relates, can and 
does construct the improvement, before it will pre- 
vent a subsequent inventor from obtaining a patent . 

" To constitute an invention or discovery, as defined 
by the Patent Office and the Courts, the idea must ])e 
embodied in a practical form." 

McCuUough vs. Watkins, 8 0. G., 1074. 

" Mere change of material used in the construction 
of devices is not invention ; it is only the exercise of me- 
chanical judgment, and hardly adds enough to the do- 
main of knowledge to raise the person to the dignity of 
an inventor who first thought of making such a change. ' ' 

Putnam vs. Yerrington, 9 0. G., 689. 

" Whenever a change or device is new and accom- 
plishes beneficial results, the Courts look with favor 
upon it. The new result is evidence of invention." 

BirdseU vs. McDonald, 6 0. G.. 682. 

" The simplicity of an invention may constitute its 
great excellence and value." 

Pennock appl. from Com., S. C. D. C, 5 0. G., 668. 

' * It is no new invention to use an old machine for a 
new purpose." 

Roberts vs. Dyer, 10 0. G., 204. 

''When adaptation is required to secure a new re- 
sult by applying an old device to a new use, invention 
is presumed, and the new organization may be patent- 
able. ' ' 

Levi Stevens, 1 0. G., 223. 

" Slight changes sometimes effect surprising results, 
and may change the operation of an old machine so 
as to adopt it to a new and valuable use not known 
before, and to which the old machine could not be 
applied without those changes. It by the change a 
new result is produced, it may be patented." 

Seymour vs. Osborne, 3 Fisher, 555. 

Pearl vs. Ocean Mills, 11 0. G., 2; 

Baltimore, Md. 



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" A person assumes the role of an inventor when he 
has devised the means whereby his ideas are to be 
made available to the public." 

Wicks vs. DuBois, 11 0. G., 244. 

"A difference in form which is productive of new 
and useful results cannot be said to be a matter of 
fancy, or the exercise of mechanical skill, but such a 
difference is invention." 

Bppinger vs. Richey & Boniface, 12 0. Gr., 714. 

*' A patent for a process irrespective of the particu- 
lar mode or form, of apparatus for carrying it into effect, 
is admissable under the patent laws of the United 
States." 

Tilghman vs. Proctor et al. 19 0. G. 859. 

REDUCTION OF INVENTION TO PRACTICE. 

The right and title of a patentee, who being himself 
a bo?ia fide original inventor having published the in- 
vention by obtaining his Patent, cannot be destroyed 
by the fact that some one else had a prior conception 
of the idea, ending in experiment, and never reduced 
to that practical shape in which alone it can be useful 
to the public. 

''Conception " of an invention has been held to take 
date from the first placing on record, or communica- 
tion to another person of such a description as would 
have enabled one skilled in the art to put it in execu- 
tion. 

An invention is construed to be " matured " either 
by complete description in a patent, or in an applica- 
tion for patent, or by such public use as would have 
Mann & Co., Patent Attorneys. 



25 

worked abaiidoiiinent if it had occiiiTed more than 
two years prior to the application for patent. 

The law on the subject has been formulated as fol- 
lows : 

'* Before an invention can be considered as having 
been so ' ' reduced to practice "as to give its author, 
without further effort on his part, an irrefragable title 
to it, it must have been embodied in a practical work- 
ing machine, capable of being operated to perform its 
intended functions for business purposes. If not cap- 
able of such embodiment, it must have been brought 
to an equivalent state of perfection in some other way. 
(For instance by procuring a patent. ) Upon this point 
there is no conflict in our Judicial tribunals." 

" A patentee who is first to conceive an invention, 
first to make a model, the first to apply for a Patent, 
and the first to obtain the grant, is not required to 
have put his invention to practical use." 

Busha vs. Phelps & Edmunds, 9 0. G., 1010. 

' ' If the one who first conceives the invention is dili- 
gent in applying for a Patent, he will be entitled to 
priority as against one later to conceive but first to 
reduce the invention to practice." 

Freeborn vs. Foye, 9 0. G-., 884. 

" The phrase " reduce to practice," does not import 
the bringing of the invention into use ; when used in 
reference to an invention it means the putting of the 
invention in such form that it maj/ be used, thus 
demonstrating it is no mere theory." 

Heath vs. Hildreth, Cranch Patent Dec, 96. 

" Where one is first to conceive an invention, but 
throws aside all evidence of the conception, makes no 
effort to introduce it to the public, and delays making 
application for a patent for several years after another 

Baltimore, Md. 



26 

has brought it into extensive use, he has no standing 
as an inventor. ' ' 

Hart vs. Little, 7 0. G., 962. 

" No doctrine is better settled than that the subse- 
quent inventor who perfects his invention and adapts 
it to use, (that is, •'•' reduces it to practice,") while 
one prior to invent is unreasonably delaying, is, in con- 
templation of law, the first inventor and entitled to a 
patent for the invention." 

Lay vs. Wiard, 9 0. &., 350. 

FOUR IMPORTANT THINGS. 

Sec. 4920. — Li any action for infringement the de- 
fendant may plead the general issue, and having given 
notice in writing to the plaintiff or his attorney, thirty 
days before, may prove, on trial, any one or more of 
the following special matters : 

First. — That for the purpose of deceiving the public 
the description and specification filed by the patentee 
in the Patent Office was made to contain less than the 
whole truth relative to his invention or discovery, or 
more than is necessary to produce the desired effect ; 
or, 

Second. — That he had surreptitiously or unjustly 
obtained the patent for that which was in fact in- 
vented by another, who was using reasonable diligence 
in adapting and perfecting the same ; or. 

Third. — That it had been patented or described in 
some printed publication prior to his supposed inven- 
tion or discovery thereof ; or. 

Fourth. — That he was not the original and first in- 
ventor or discoverer of any material and substantial 
part of the thing patented ; or, 

^lann & Co., Patent Attorneys. 



Fifth. — That it had been in public use or on sale in 
this country for more than two years before his appli- 
cation for a patent, or had been abandoned to the 
public. 

A consideration of the matters set forth in the second, 
third, fourth and fifth defenses under this section will 
be particularly instructive, since they are applicable 
with equal force in a contest before the Commissioner 
to obtain a patent, or before the Courts to defeat one. 

REASONABLE DILIGENCE. 

When an interference is declared in the Patent Office 
between two opposing applicants, the rights of the 
contesting parties are decided by the Examiner of 
Interferences upon testimony taken by the respective 
parties. 

The point to be adjudged is ' ' priority of invention. ' ■ 
The general rule is that he is the first inventor who 
has ^Ysi perfected and adapted the invention to use. 

But this rule is subject to tlie qualification that he 
who first invents: i. e. mentally originates, shall have 
the prior right, if he ivew using reasonable diligence 
in adapting and perfecting the invention. 

•' When, after making a model, the inventor took 
no further steps for several years, although able to 
apply for a patent, and another in the meantime ob- 
tained a patent, the first party must be held to have 
been wanting in diligence." 

Hammond vs. Laird, 7 0. G., 170. 

•' An inventor cannot safely let his invention rest in 
an incomplete state simply because .he meets difficul- 
ties at the outset ; he is not thereby excused from 

Baltiraore, Md. 



2S 

using till roasoiiiibk' diligence in his ondeavoi's to sui- 
moiint such impediments and perfect the invfMition," 
Barnes vs. Clinton, 9 0. G., 1158. 

" The diligence required of the one first to conceive 
in order to make out a superior title to the invention 
as against one first to reduce the same to practice, is 
an absolute and not a relative matter, and must be 
shown to be reasonable under the circumstances." 

Milhvard vs. Barnes & Barnes, 11 0. G., 1060. 

" As between applicants for a Patent, in a case of 
interference, the question of '' reasonable diligence" 
only arises where one conceives the^lea of an inven- 
tion first and the other is first to reduce it to practice." 

Allen vs. Gilman, 2 G., 390. 

" If nothing is shown in the evidence to account for 
an inventor's delay in reducing his invention to prac- 
tice, he must l^e held chargeable with want of dili- 
gence." 

Hovey vs. ilufeland, 0. G., -31. 

" Mere delay in applying for a Patent after the in- 
vention has been perfected, will not (alone) warrant a 
judgment of priority in favor of a subsequent inven- 
tor." 

Traut vs. Ilawley, 10 0. G., 979 j 

PRINTED PUBLICATION. 

A prior patent for, or printed publication of, a 
similar thing is the best possible evidence of want of 
novelty in an invention, and s^ foreign patent or printed 
publication is equally effective with a domestic one. 
In either case it is a record, accessible to the public, 
of the prior existence of the invention claimed by the 
applicant or patentee as original with himself. But to 
bar an application or invalidate a patent, a prior patent 
Maun & Co., Patent Attorneys. 






29 

or printed puljlicatiou, whether domestic or foreign, 
should set forth the invention so clearly and intel- 
ligibly that a properly skilled person could, guided 
by such description, and without any trials, experi- 
ments or addition of his own, construct or put in prac- 
tice the hivention; and it. when so constructed or put in 
practice, must embody the same principle of operation 
and produce the same result as the alleged invention, 
or such prior publication will not be held to be a legal 
anticipation. Mere vague suggestions of something 
similar will not suffice. 

'• A prior description of a part cannot invalidate a 
patent for the whole." 

Westinghouse vs. Gr. & R. Air Brake Co., 9 0. Gr,, 
588. I 

"A pattern book, without any descriptive matter 
contained in it, cannot be regarded as a printed pub- 
lication, such as is contemplated in the Revised Stat- 
utes, as being a bar to the issue of a patent." 

Ex-parte Atterbury, 9 0. G., 604. 

PRIORITY OF INVENTION. 

Sec. 4904. Whenever an application is made for a 
Patent which, in the opinion of the Commissioner, 
would interfere with any pending application, or with 
any unexpired Patent, he shall give notice thereof to 
the applicants, or applicant and patentee, as the case 
may be, and shall direct the primary examiner to pro- 
ceed to determine the question of priority of invention. 
And the Commissioner may issue a Patent to the 
"party who is adjudged the prior inventor, unless the 
adverse party appeals from the decision of the primary 
examiner, or of the board of examiners-in-chief, as the 

Baltimore, Md. 



30 

case may be, within such time, not less than twenty 
days, as the Commissioner shall prescribe. 

How often it happens that after some person has 
made a valuable invention, and obtained a Patent 
therefor, people are heard claiming to have made the 
same invention long before ; even if these pretenders 
are truthful, and their imaginations have not been 
called on to supply the deficiencies of their memory, 
they never reduced the invention to practice, nor made 
it known to the world, they are not, therefore, merito- 
rious inventors. 

The question of prior invention comes up for dis- 
cussion before the Patent Office oftener than in the 
United States Courts. 

The proceeding technically known as an "interfer- 
ence," is a test suit instituted for the purjJose of de- 
termining the question of priority of invention be- 
tween two parties claiming the same patentable sub- 
ject-matter. 

" He is the prior inventor, and is entitled to the 
Patent for an invention, who first embodies it in a 
complete, practical, working utensil, and exhiV)its it 
to the public, though another afterwards reduces it to 
l.)ractice, and applies for a Patent before him." 

Rice vs. Winchester, 3 0. G., 348. 

"If an inventor, after makijig two secret experi- 
ments, takes no further steps with his improvement 
for five years, when he applies for a patent, and an- 
other, meanwhile, has reduced it to practice and put 
it in the market, what the first has done will be re- 
garded as abandoned experiments, and the other party 
will be adjudged the prior inventor." 

Lippman vs. Marchant, 4 0. G., 320. 

Mann & Co., Patent Attorneys. 



31 

" If an inventor, after making a model of his device, 
kept it in his office and took no further steps with it 
for upwards of four years, and another in the mean- 
while originated it and introduced it largely into the 
market, llie latter is to be held the prior inventor." 

Bradford vs. Corbin, 6 0. G., 223. 

' ' If the party who first conceived a machine fol- 
lowed up the idea diligently, and was the first to reduce 
it to actual practice, he is entitled to a patent for it, 
although his competitors had complete working draw- 
ings of it previously prepared, and obtained a patent. ' ' 

Eees vs. Richards & Berry, 7 0. G., 37. 

"He is the inventor, entitled to the protection of 
the Patent Law, who is first to complete the invention 
and publish it to the world, and not he who confines 
the knowledge of it to his closet." 

Arnold vs. Wilcox, 7 0. &., 558. 

A GOOD PRECAUTION. 

As an inventor is liable, either before he obtains his 
patent or after it issues, to be called on by the Commis- 
sioner of Patents in a case of " interference," to show 
the date of his invention, he should be able by some 
reliable evidence to show this date. The following 
plan will generally serve the purpose: 

As soon as your ideas of an improvement have 
taken definite shape and form, make a sketch showing 
the same on paper, and if satisfied of its practicability 
and that it will serve the desired purpose, you should 
then make more careful drawings of it, showing plainly 
the various parts in detail, and write a brief but clear 
description of its construction, by which a mechanic 
would be able to make one. 

Baltimore, Md. 



32 

Having done this to your satisfaction, you should 
now proceed to have a model made, and at once apply 
for a patent. But if for any reason you are not ready 
to file an application for a Patent, then you should 
take the necessary steps to enable you to establish the 
date of your invention. One plan to this end is to take 
the drawings you have made, and call on two or three 
of your most trustworthy friends or acquaintances, 
and let them examine the drawings until they fully 
understand them. 

Upon a portion of the same sheet on which the 
drawings are made, and to which the description is 
attached, write a certificate something like the follow- 
ing : 

Elmira, Illinois, March 10, 1868. 

This is to certify that we have carefully examined 
the drawings and description on this sheet of an Im- 
provement in Wash Boilers, and understand its con- 
struction and mode of operation, and that Mr. David 
0. Smith claims it as his invention. 

Wm. R. Matthews, 
Joseph B. Williams, 
John Richardson. 

another precaution. 
The value of an accurate record of an invention 
covering the entire period of its development cannot 
be over-estimated. It is often of great value, even 
after a patent is granted. It fixes the date of inven- 
tion, shows whether the inventor has exercised due 
diligence in perfecting his invention, and is an unim- 
peachable witness in cases of interference or any other 
litigation that may arise. 

Mann & Co., Patent Attorneys. 



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33 

SPECIMEN FORM OF RECORD. 
NAME OF INVENTION. 

Wash Boiler. ...:*...., , ... 

WHEN CONCEIVED, 

. Monday, March 1, 1868 

FIRST DRAWING OR SKETCH MADE. 
,. March'i, 1868..,:... 

TO WHOM SHOWN, AND WHEN AND WHERE. 
Wm. R. Matthews, March 3, 1868, af his shop, 

FIRST MODEL OR EXPERIMENT MADE 
March 6,1868 

TO WHOM SHOWN AND WHEN. 
Jno. B Williams and John Richardson, March 10, 1868. 

THE FOLLOWING IS A DESCRIPTION OF MY IMPROVED 

' • Here Describe « • ^ i 

REFERENCE BEING MADE BY LETTER TO THE 
ANNEXED SKETCH. 



.Here Make Sketch. 
Baltimore, Md. 



TWO YEAR S PUBLIC USE. 

Public use is a use, not hy the public necessarily, 
but any use — though it may be only limited — in pub- 
lic, so that there may be jmblic knowledge of the thing 
for more than two years. 

The law allows an inventor to put his invention in 
use and on sale for a period not exceeding two years 
prior to his application for a Patent therefor, without 
being liable to the charge of abandonment. 

The question as to whether the invention was in 
use f 07- profit, is of vital importance. 

An inventor has a right to put his invention in 
practice, (not on sale) even for a number of years, so 
long as that is done; not for profit, but with the pur- 
pose and intent to perfect or test the invention. 

" Where an invention has through the acts or by 
the acquiesence of an inventor, gone into public use 
for more than two years, his right to it is forfeited 
beyond recall." 

Jones et al. vs. Sewall, 3 0. Gr., 630. 

' ' A Patent cannot be defeated by a single machine 
when the recollection of the mechanism that consti- 
tuted it has passed away from the mind of the witness 
who deposes to its existence a number of years before, 
so that it cannot from sucli recollection be recon- 
structed, and there being no other record of it." 

Taylor vs. Wood, 8 O. G., 90. 

' ' The experimental use of a machine more than two 
years before filing an application does not affect the 
right to a Patent." 

Chambers & Mendham vs. Duncan, 10 0. Gr. , 787. 
Mann & Co., Patent Attorneys. 



35 

'* There is an obvious distinction between a public 
use or a use by bhe public, and an experimental use 
in pablic. Many inventions can be tested only in that 
way." 

Locomotive Truck Co. vs. Penn. R. R. Co., 6 0. Gr., 
927. 

•• A single instance of sale, purchase or use under 
the circumstances specified in the section, will render 
the Patent void." 

Con. Fruit Jar Co. vs. Wright, 6 0. G.. 327. 

Egbert vs. Lippman, 21 0. G., 75. 

ABANDONMENT OF APPLICATION. 

Sec. 4894. illl applications for Patents shall be 
completed and prepared for examination within two 
years after the filing of the application, and in default 
thereof, or upon failure of the applicant to prosecute 
the same within two years after any action therein, of 
which notice shall have been given to the applicant, 
they shall be regarded as abandoned by the parties 
thereto, unless it be shown to the satisfaction of the 
Commissioner of Patents that such delay was una- 
voidable. 

Applications for Patents which are abandoned or 
which lapse under the two years limit provided in 
this section, may subsequently be revived, or a new 
application filed, upon payment of the oflBee fee as in 
original applications. 

ABANDONMENT OF INVENTION. 

Aftei' A2)2Mcation. 

Sec. 4897. Any person who has an interest in an 
invention or discovery, wliether as inventor, discover- 
er, or assignee, for which a Patent was ordered to issue 
upon the payment of the final fee, but who fails to 

Baltimore, Md. 



36 

iinike payment thereof within six months from the 
time at which it was passed and allowed, and notice 
thereof was sent to the applicant or his ag:ent, shall 
have a right to make an application for a Patent for 
svich invention or discovery the same as in the case of 
an original application. Bat such second application 
must be made within two years after the allowance of 
the original application. But no person shall be held 
responsible in damages for the manufacture or use of 
any article or thing for which a Patent was ordered 
to issue under such renewed application prior to the 
issue of the Patent. And upon the hearing of renewed 
applications preferred under this section, abandonment 
shall be considered as a question of fact. 

Down to November 29th, 1881, it was the practice 
in the Patent Office to treat all applications which 
had been " allowed," and on which the final fee had 
not been paid, and no renewed application had l)een 
made, as forfeited. The application was treated as 
forfeited, and the invention described in the applica- 
tion was also treated as forfeited as against the appli- 
cant therefor. 

In all such cases, as far as the applicant was con- 
cerned, the invention ivas regarded as dead. On the 
date named, a case was decided by the Commissioner 
of Patents which changed this practice, and now Pat- 
ents may be obtained by fi.ling a new application, no 
matter how much time has elapsed since a former ap- 
plication was "allowed." 

" Applications for patents will be hereafter exam- 
ined without reference to former applications forfeited 
and abandoned by operation of section 4897, llevised 
Statutes." 

Mann & Co , Patent Attorneys. 



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'• ' To overcome in such cases any presumption aris- 
ing under Section 4886, Revised Statutes, that the 
invention was in public use prior to the tiling of the 
former application, applicants will l^e required, before 
the issuance of their patents, to furnish affidavits 
showing that the invention has not been in public use 
more than two years prior to the filing of their later 
applications. 

The doctrine may now be considered as well estab- 
lished that the abandonment of an apjiUcation is not 
of itself proof that the applicant has abandoned his 
incenfion, and the presumption arising therefrom to 
th^it effect is overcome when the applicant has mani- 
fested his intention of further prosecuting his inven- 
tion hj filing and prosecuting an application for a 
patent. 

Ex-parte Livingston, 20 0. G., 1747. 

Where the application is forfeited by reason of non- 
payment of final fee within six months, the invention 
"may still be secured by a Patent by filing a petition 
for the renewal of the same application within two 
years after date of allowance. 

Before Application. 

An invention may be abandoned at any time prior 
to application for patent. But the law does not favor 
a presumption of the abandonment of an invention, 
except in the case of public use or sale for more than 
two years. 

''If an alleged prior invention was only an experi- 
ment, never perfected, but abandoned, it cannot preju- 
dice a Patent for a similar improvement obtained by 
;i j^ubsequent inventor." 

Brown vs. Guild, 6 0. G., 802. 
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"A Patent will not be set aside upon the mere tes- 
timony of a single witness that many years ago he saw 
a machine like the one described ; it must be regarded 
at most as an abandoned experiment, no second ma- 
chine having been known." 

La Baw et al. vs. Hawkins et al. 6 0. G., 724. 

SKILLED AID TO PERFECT AN INVENTION. 

There can be no tloubt that an inventor is entitled 
to the aid, counsels, and experiments of experts or 
scientific men, and to the suggestions of skilled me- 
chanics, in reducing his invention to practice, without 
forfeiting his right to the title of inventor. 

It is perfectly clear that. an inventor may derive his 
information by which he is enabled to prosecute his 
experiments successfully, either from books or fi-om 
consultation with skilled mechanics. 

]\'h . Justice Clifford in delivering the decision of the 
Supreme Court of the United States, at the October 
term, 1874, in the case of the Union Paper Collar Co. 
V8. Isaac Van Deusen, et al., reported in 7 0. G., 919, 
said 

" Where a person has discovered a new and useful 
principle in a machine, manufacture, or composition 
of matter, he may employ other persons to assist in 
carrying out that principle ; and if they, in the course 
of experiments arising from that employment, make 
discoveries auxiliary to the plan and preconceived de- 
sign jof the employer, such suggested improvements 
are, in general, to be regarded as the property of the 
party who discovered the original principle, and they 
may be embodied in his Patent as part of his inven- 
tion. Doubt upon thaf subject cannot be entertained. 

Mann & Co., Patent Attornej'S. 



39 

But persons employed as much as the employers are 
entitled to their own independent inventions ; and if 
the suggestions communicated by the jDersons em- 
ployed constitute the whole substance of the improve- 
ment, the rule is otherwise, and the Patent, if granted 
to the employer, is invalid, because the real invention 
or discovery belongs to- the person who made the sug- 
gestions." 

RIGHTS OF EMPLOYER AND WORKMAK-. 

Where, in the absence of any specific contract, a 
man makes an invention ill the time of his employer, 
using his tools and materials in experiments and con- 
struction, this fact would be regarded evidence that 
the improvement was intended to be for the benefit of 
the emjiloyer. 

But when a workman himself suggests and hivents 
an improvement, without previous direction from his 
employer, the invention belongs to the workman, and 
the employer has no claim thereon, although the de- 
vice may have been made in the shop of the employer, 
with his tools, and during time belonging to him. 

A party who merely states that a certain article is 
wanted for a certain purpose, cannot obtain a patent 
for the article if it is prepared by another. 

To entitle the party to set up the claim of inventor, 
the suggestions he makes must embrace the plan of 
the improvement; they must relate to the specific 
arrangement so that a properly skilled person, without 
the exercise of any ingenuity on his part, may be able 
to construct and put the improvement in successful 
operation. 

Baltimore, Md. 



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' ' No presumption arises against a workman that an 
improvement which he makes belongs to his employer, 
when he was employed to do specified work and not to 
embody an invention of his employer." 

Holman vs. Foley, 2d Com. Dec, 97. 

Whiting vs. Graves, 13 0. G., 455. 

" Persons are not deprived of the right to their in- 
ventions while in the service of others, imless they 
have been hired and paid to exercise their inventive 
faculties for their employers." 

" A contract by which one person agrees to pay a 
sum of money for the time, labor, and skill of another 
for a given period, gives the employer no right to an 
assignment of a patent that is issued to his employee 
for an invention made during the period of his em- 
ployment." 

Hapgood et al. vs. Hewitt, 21 0. G., 1786. 

JOINDER OF INVENTORS. 

Whenever an nivention is the joint product of 
several minds, a patent must be applied for by all the 
inventors^ and if a patent for such an invention is 
taken by any number of such inventors less than the 
wliole number, such patent is void. 

It is sometimes difficult to determine whether an 
invention is joint or single, but, when two or more 
persons are engaged together in making an invention, 
such invention is joint, and the courts will not go into 
all the details of the case, although one or the other 
of the persons must have been the first to suggest this 
or that part, or the whole of the invention. 

The rules of practice of the Patent Office provide 
that 

Mann & Co., Patent Attorneys. 



41 

•' 'Joint inventors are entitled to a joint patent ; 
neither can claim one separately ; but the independent 
inventors of separate and independent improvements 
in the same machine cannot obtain a joint patent for 
their separate inventions, nor does the fact that one 
man furnishes the capital and the other makes the in- 
vention entitle them to make application as joint in- 
ventors." 

"If one originates the general idea of an improve- 
ment, and another aid him in developing it and re- 
ducing it to a practical form, they may be considered 
joint inventors." 

Chase et al. vs. Chase, 4 0. G-., 4. 

" It is well settled that if two inventors are on equal 
terms in respect to the invention, and both contribute 
to the essential parts of the organization regarded as 
a whole, the patent would be invalid if issued to one 
of them." 

Carter & Dwyer vs. Perry & Dickey, 8 0. G., 518. 

EXECUTOR AND ADMINISTRATOR. 

Sec. 4896. When any person, having made any new 
invention or discovery for which a Patent might liave 
been granted, dies before a Patent is granted, the right 
of applying for and obtaining the Patent shall devolve 
on his executor or administrator, in trust for the heirs 
at law of the deceased, in case he shall have died in- 
testate ; or if he shall have left a will, disposing of the 
same, then in trust for his devisees, in as full manner 
and on the same terms and conditions as the same 
might have been claimed or enjoyed by him in his life- 
time ; and when the application is made by such legal 
representatives, the oath or affirmation required to be 
made shall be so varied in form bhat it can be made 
by them. 

Baltimore, Md. 



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"A Patent granted to the administrator or executor 
of an inventor is held by him, 2^rima facie, in trust for 
the heirs, it is valid althougli the trust is not expressed 
on the face thereof, because the law creates the trust." 

N. W. Fire Ex. Co. et al. vs. Phila. Co*., 6 0. G., 84. 

' ' The Patent Law directs the mode in which assign- 
ments of });itents are to be made and where such shall 
be recorded ; an administrator does not acquire any- 
right or authority in relation thereto by State laws, he 
must be governed by the U. S. . Patent Law. He may 
sell tlie patent or any part of the right, as adminis- 
trator, the same as any other personal property of the 
estate. Should there be more than one administrator, 
an assignment might be made by one alone which 
would legally convey the whole interest in the patent." 

Brooks vs. Jenkins, 3 McLean, 482. 

Winternmte vs. Reddington, 1 Fisher, 239. 

"An administrator of a patentee residing in one 
State may commence an action in the U. S. Circuit 
Court of another State without taking out new letters 
of administration in the State where the snit is 
brought." 

Smith vs. Mercer, 5 Penn. Law Jour., OoL 

DESIGN PATENTS. 

It is assumed that a sutReiently accurate under- 
standing exists as to the nature of patents on a pro- 
cess, a machine, a maiuifacture and a composition of 
matter, but as the scope and import of design patents 
are not so generally understood, it may be well to 
consider them briefly. 

Sec. 4929. Any person who, by his own industry, 
genius, efforts and expense, has invented and produced 
any new and original design for a manufacture, bust, . 

Maun & Co., Patent Attorneys. 



43 

statue, alto-relievo, bas-relief ; any new and origi- 
nal design for the printing of woolen, silk, cotton, or 
other fabrics ; any new and original impressions, orna- 
ment, pattern, print, or picture to be printed, painted, 
cast, or otherwise placed on or worked into any ar- 
ticle of manufacture ; or any new, useful, and original 
shape or configuration of any article of manufacture, 
the same not having been known or used by others 
before bis invention or production thereof, or patented 
or described in any printed publication, may, upon 
payment of the fee prescribed, and other due proceed- 
ings had the same as in cases of inventions or discov- 
eries, obtain a patent therefor. 

Sec. 4933. All the regulations and provisions which 
apply to obtaining or protecting patents for inventions 
or discoveries not inconsistent with the provisions of 
this title, shall apply to patents for designs. 

It should be understood that patents of this class 
are entirely distinct from ordinary patents. The latter 
relate to new machines, devices, mauufactures, and 
compositions of matter ; while patents for designs re- 
late to shape, configuration, and ornamentation. 

It is the cqjj^earance given to any object by a design 
which constitutes the real essence of a design patent ; 
that appearance may consist in the shape or configu- 
ration, and without regard to how it is produced. 

The law manifestly contemplates that giving new 
and original appearances to a manufactured article 
may enhance its saleable value, may enlarge the de- 
mand for it, and may be a meritorious service to the 
public. 

The Supreme Court of the United States, in regard 
to the infringement of design patents, says : 

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44 

" If in the eye of an ordinary observer, giving such 
attention as a purchaser usually gives, two designs are 
substantially the same, if the resemblance is such as 
to deceive such an observer, and is sufficient to induce 
him to purchase one supjwsing it to he the other, the 
one first patented is infringed bv the other." 

Gorham Mf'g Co. vs. White, 2 0. G., 592. 

*' A name sign with an imitation gold pen attached 
to it constitutes a proper subject for a design patent." 
B.r-parte Fairchild, 8 0. G., 328. 

'' The same degree of originality is required in both 
design and functional patents — that is, the claim must 
not comprehend alone what is already in existence." 

E.v-2)arte Xiedringhaus, 8 0. G., 279. 

" The novelty of the design may consist in the form 
outline, or grouping ; in others, in the use, combina- 
tion, arrangement, or harmony of colors; in others, in 
the coml)ination of some or all of these attributes." 

Richardson vs. Miller, 12 0. G., 3. 

COMBINATIONS IN INVENTION. 

An invemion may l)e a specific thing, or a comijina- 
tion of specific things. In a just sense that is a com- 
bination which requires different things to be brought 
together to accomplish the given result. 

A combination may be valid and proper tliough all 
the i)arts which compose it ai-e old when sejxirately 
considered. But merely brhiging old devices into 
juxtaposition, and there allowing each to work out its 
own effect without the production of something novel, 
is not comljination. 

A patent for a combination can only be proved in- 
valid by showing that all the elements thereof had 
Mann & Co., Patent Attorneys. 



45 

been used together before, and in the same relation to 
each other. 

It will be observed that all depends on the result 
produced — if the effect or result of the arrangement is 
new and beneficial, it will be regarded as a meritorious 
invention and worthy of a patent. 

The general rule is the element of a combination 
must co-act, — that is the parts which comprise the 
combination must co-operate in producing a result. 

" A combination in mechanism must consist of dis- 
tinct mechanical parts, having some relation to each 
other, and each having some function in the organ- 
ism." 

" When a new coml)ination is made bringing about 
a new result, it is patentable." 

Hawes vs. Washburne, 5 0. G., 491. 

" If the several devices composing the combination 
are old, the patent to the combination may be valid. 
but the patentee cannot deprive others of the right to 
use the devices separately or to use them in other com- 
binations, or to use some of them in combination, 
omitting others." 

Hailes vs. Van Wormer, 7 Blatchford, 443. 

' ' A combination of old ingredients is not infringed 
unless it appears that the alleged infringer made or 
used the entire combination." 

Storrs vs. Howe, 10 0. G., 421. 

EQUIVALENTS IN A PATENTABLE SENSE. 

An equivalent in mechanics is a specific thing that 
does something or effects something in substantially 
thesame way as the thing for which it is substituted ; 
it is a mei-e substitution of one mechanical power for 
another, or one obvious mode for another of affecting 
Baltimore, Md. 



4(3 

a like result ; as generally understood, one thing is aii 
equivalent for another if either one may be adopted 
instead of the other — the result or effect produced 
being the same in both cases. 

The distinction between an " equivalent " and a 
mere " colorable evasion " has never been precisely 
determined ; ' ' equivalents ' ' may be said to be a term 
that embraces '' colorable evasion," the latter being 
simply a kind of mechanical dodge resorted to by 
those who seek to " get around a patent." 

Of course, if a thing is substituted for another that 
produces a useful result which the other is incapable 
of, it is not an equivalent. 

" The use of an equivalent may infringe a Patent 
even if in some respects it is an improvement on the 
original patent." 

Woodward vs. Morrison, et al., 3 0. G., 121. 

" Equivalents are such ingredients or things as will 
perform the same function as the one described or 
shown, and which were well-known at tlie date of the 
Patent as proper substitutes for the ones described 
the Patent." 

Storrs vs. Howe et al., 10 0. G., 421. 

' ' If anyone uses all the elements of a patented cou 
bination except one, and, instead of that, emplo; 
ivhat ivas hioum at the date of the Patent to be a 
proper substitute for the omitted element, he is lialjL' 
for an infringement of the Patent, But he is not lia- 
ble if he uses any other substitute, even an old one, 
ivhich performs a different result.''' Nor is he liable 
if he uses a substitute which is itself a new thing. 

Gill vs. Wells, S. C, 6 0. G., 881. 

Seymour vs. Osborne, 11 Wallace, 876. 

s Mann & Co., Patent Attornej'S. 



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" Mere colorable diiference or slight improvements 
cannot protect an infringer. ' ' 

Odiorne vs. Winkley, 2 Gallison's Rep., 54. 

" A device is the equivalent of one that is patented 
i if it performs the same function in the same way and 
produces the same result, though it may be of a dif- 
ferent form and bear a different name ; and the use 
of such will be an infringement." 
Westlake vs.^Cartter, 4 0. G., 336. 

" The substitution for one part of the operating 
mechanism, of a combination the equivalent of that 
: omitted, does not avoid an infringement." 

Robertson et al. vs. Blake, S. C, 11 0. G., 877. 

REISSUE OP DEFECTIVE PATENTS. 

See. 4916. Whenever any Patent is inoperative or 
invalid, by reason of a defective or insufficient speci- 
fication, or by reason of the patentee claimin g as his 
own invention or discovery more than he had a right 
to claim as new, if the error has arisen by inadver- 
tence, accident, or mistake, and without any fraudu- 
lent or deceptive intention, the Commissioner shall, 
on the surrender of such Patent and the payment of 
the duty required by law, cause a new Patent for the 
same invention, and in accordance with the corrected 
specification, to be issued to the patentee, or, in the 
case of his death or an assignment of the whole or any 

] undivided part of the original Patent, then to his ex- 
ecutors, administrators, or assigns, for the unexpired 

• part of the term of the original Patent. Such sur- 
render shall take effect upon the issue of the amended 
patent. The Commissioner may, in his discretion, 
cause several patents to be issued for distinct and sep- 

I arate parts of the thing patented, upon demand of 
the applicant, and upon payment of the required fee 

! Baltimore, Md. 



48 

for a reissue for each of such reissued letters patent. ! 
The specifications and claim in every such case shall ; 
be subject to revision and restriction in the same man- 
ner as original applications are. Every Patent so re- 
issued, together with the corrected specification, shall : 
have the same effect and operation in law, on the trial 
of all actions for causes thereafter arising, as if the 
same had been originally filed in such corrected form ; 
but no new matter shall be introduced into the speci- 
fication, nor in case of a machine patent shall the 
model or drawings be amended, except each by the 
other ; but when there is neither model nor drawing, 
amendments may be made upon proof satisfactory to 
the Commissioner that such new matter or amendment 
was a part of the original invention, and was omitted 
from the specification by inadvertence, accident, or 
mistake, as aforesaid. 

A Patent is not valid if essential information is 
omitted, or if anything be so scantily, obscurely, or 
unintelligibly stated that the whole description taken 
together is not sufficient to guide those skilled in the 
art to a correct and beneficial use of the invention. 

Now it may, and frequently does happen, that an 
inventor inadvertently omits such reference in his de- 
scription or claim to some material and substantial I 
part of his invention as would warrant a judicial con- 
struction of his patent as covering that part. This, 
then, is a case where the patent, by reason of a defec- 
tive and insufficient specification, is inojDerative to give ; 
an exclusive right to the actual invention. In such 
event the patentee may surrender his patent and take 
a new, or as it is termed* a reissue patent, upon an 
amended specification, which shall distinctly specify 

Mann & Co., Patent Attorneys. 



49 

and claim the whole of the actual invention shown, 
but not claimed in the original patent. 

A patentee cannot insert in a reissue, a description 
of improvements he has made since his application for 
the original patent. Such improvements can be se- 
cured only by a new and additional patent. The 
wording and phraseology of the description may be 
altered as desired, if it is confined to the same inven- 
tion as the original, and if no new matter be intro- 
duced. Everything is " new -matter" that was not 
shown in either the original drawings or specifi- 
cation. 

There is no limit to the number of times a patent 
may be reissued if good reason exists therefor. A re- 
issue does not prolong or extend the term for which 
the original was granted ; it only covers the unexpired 
part of the original term. 

As the surrender of an original patent does not take 
effect until the issue of the amended patent, if appli- 
cation for the latter be refused and withdrawn, the 
original remams in force. 

A patentee, cannot after reissue, recover damages, 
by a suit based on the reissued patent, for infringe- 
ment done prior to the reissue. 

"A surrender of a patent, for the purpose of reissue 
after a decree or judgment in a suit has been render- 
ed, has no effect upon the right to the damages passed 
previously into judgment. Such damages must be 
paid, the patentee's right thereto rests on his decree 
and not on his patent." 

Mevs vs. Conover, S. C, 11 0. a., 1111. 
Baltimore, Md. 



50 

Prior to the year 1881, a certain license liad long 
prevailed in the matter of enlarging the scope of 
claims by reissue, and to this many evils are tracea- 
ble. In its decision of the case of ' ' Edward Miller & 
Co. vs. The Bridgeport Brass Company," the Supreme 
Court took a stand in opposition to the practice of re- 
issuing for the purpose of securing larger or expanded 
claims after any considerable or unexplained delay. 
The decision is an important one, and may be found 
in full in Vol. 21, 0. G., page 201. J 

DISCLAIMER. ^ 

Sec. 4917. Whenever, through inadvertence, acci- 
dent, or mistake, and without any fraudulent or de- 
ceptive intention, a patentee has claimed more than 
that of which he was the original or first inventor or 
discoverer, his Patent shall be valid for all that part 
which is truly and justly his own, provided the same 
is a material or substantial part of the thing patented; 
and any such jiatentee, his heirs or assigns, whether of 
the whole or any sectional interest therein, may on 
payment of the fee required by law, make disclaimer of 
such parts of the thing patented as he shall not choose 
to claim or to hold by virtue of the Patent or assign- 
ment, stating therein the extent of his interest in such 
patent. 

A disclaimer, is, when filed, to be considered as a 
part of the specification, in considering the rights of 
the party filing it. It may strike out one or more 
clauses of claim, or it may modify all or a part of the 
claim, and, when there is but a single clause of claim, 
it may modify that. 

A disclaimer may be filed by the owner of the wh^ 
patent, or the owner of a Territorial right, and effer • ^ 
Maun & Co., Patent Attorneys. 



the rights only of those who Join in it, though an as- 
signee or grantee would take the rights and position 
of his assignor or grantor. The disclaimer must state 
the interest in the patent held by the party disclaiming, 

''Matters properly disclaimed cease to be a part of 
the invention, and render the Patent the same as if 
such matters had never l^een included." 

Dunbar & Hopper vs. Myers et al., 11 0. G., 35. 

purchaser's rights before patent issues. 

Sec. 4899. Every person who purchases of the in- , 
ventor, or discoverer, or with his knowledge and con- 
sent constructs any newly invented or discovered 
machine, or other patentalile article, prior to the ap- 
plication by the inventor or discovei'fer for a patent, 
or who sells or uses one so constructed, shall have the 
. right to use, or vend to others to be used, the specific 
thing so made or purchased, without liability therefor. 

The terms of this section exclude from its benefit 
those who may, prior to application for patent, have 
constructed or applied the invention, in defiance of 
the inventor's right, or without his consent or know- 
ledge. 

MARKING ARTICLES ' * PATENTED. ' ' 

Sec. 4900. It shall be the duty of all patentees, 
and their assigns and legal representatives, and of all 
persons making or vending any patented article for or 
under them, to give sufficient notice to the pulDlic that 
the same is patented ; either by affixing thereon the 
word " patented," together with the day and year the- 
Patent was granted ; or when, from the character of 
the article, this cannot be done, by fixing to it, or to 
the package wherein one or more of them is inclosed, 

Baltimore, Md. 



a lalDel coiitaiiiiiig a like notice ; and in any suit for 
infringement, by the party failing so to mark, no 
damages shall be recovered by the plaintiff, except on 
''proof "that the defendant was duly notified of the in- 
fringement, and continued, after such notice, to make 
use, or vend the article so patented. 

The penalty imposed by the statute for a failure to 
mark patented articles is only the taMng away of the 
right to recover damages in the suit. It does not 
affect the right to an injunction, either perpetual or 
provisional, as a remedy. 

FALSELY MARKING ARTICLES PATENTED. 

Sec. 4901. Every person who, in any manner, marks 
upon anything made, used, or sold by him for which 
he has not obtained a Patent, the name or any imita- 
tion of the name of any person who lias obtained a 
Patent therefor, without the consent of such patentee, 
or his assigns or legal representatives ; or 

Who, in any manner, marks upon or affixes to any 
such Patented article the word ' ' Patent "or " Pat- 
entee,'' or the words *' Letters Patent," or any word 
of like import, with intent to imitate or counterfeit 
the mark or device of the patentee, without having the 
license or consent of such patentee, or his assigns or 
legal representatives ; or. 

Who, in any manner, marks upon or affixes to any 
unpatented article the word ' ' Patent ' ' or any word 
importing that the same is Patented, for the purpose 
of deceiving the public, shall be liable, for every such 
offense, to a penalty of not less than one hundred dol- 
lars, with costs; one-half of said penalty to the person 
who shall sue for the same, and the other to the use of 
the United States, to be recovered by suit in any di? 
trict court of the United States within whose jurisf.li 
tion such offense may have been committed. 

Mann & Co., Patent AttorneySv 



53 

The purpose of this section is to prevent the public 
from being deceived. The offence is committed if the 
act is done with an intent to deceive. The action for 
the recovery of the penalty may be brought at any 
time within five years after. 

THE RIGHTS OF A PURCHASER OF A PATENT ARTICLE, 

When a patented machine or article passes hy sale. 
and without limitation into the hands of a purchaser, 
it is no longer under the protection of the Patent Law. 
A bona fide purchaser of a patented article lawfully 
made and sold, may use or sell the article anywhere in 
the United States, without regard to who may be the 
grantee or owner of the territorital right where it is 
desired to use the article. 

An interesting case showing that restrictions may 
be imposed, is the " American Cotton Tie Company " 
who sold bale ties, the metal buckles of which were 
branded with the words " Licensed to use once only.''' 

On a suit brought by the Company against S. W. 
Simons, the U. S. District Court of Rhode Island. 
June Term, 1878, decided against the Company, and 
held, 

' ' Though the words ' ' Licensed to use once only ' ' 
were stamped upon the buckles, and words of like im- 
port were contained in the bill-heads and invoices, the 
nature of the article and of its use are such that there 
is an implied parting with the unrestricted title at the 
time of sale which is inconsistent with any such re- 
servation or limitation. ' ' 

13 0. G., 967. 

Baltimore, Md. 



54 

In another suit brought by the Company against 
BuUard, theU. S. District Court of New York, Sept., 
29, 1879, decided in favor of the Company, and held 

" That such sale on the part of the defendants was 
an infringment of the patents." 

" The words " licensed to use once only,'" stamped 
upon each buckle, was notice to everyone who handled 
it that there was attached to it a restriction in tlie 
shape of a license, and of a license to use only once." 

17 0. G., 389. 

Here, then, were two District Court Decisions at di- 
rect variance. 

The Company took an appeal in the first case to the 
U. S. Supreme Court, which, November 6, 1882, de- 
cided, reversing the decree of the lower court, and 
giving judgment for the Company. 

The Supreme Court held the words stamped in the 
buckle to be a limitation on the use of the article, and 
that a second use of it was an infringement of the 
patent. 

22 0. G., 1976. 

" The article having been purchased from one right- 
fully authorized to sell it, it may be taken by the pur- 
chaser wherever he desires, his title to it is absolute 
and unconditional." 

McKay vs. Wooster, 3 0. G., 441. 

Mitchell et al., vs. Hawley, 3 0. G., 241. 

' ' A patented machine or article is personal property 
and in the hands of a purchaser is subject, like other 
property, to state taxation." 

Bloomer vs. McQuewen, 14 Howard, 539. 

" The purchaser of a patented article who buys from 
the patentee, or from any other person by him au- 

Mann & Co., Patent Attorneys. 



55 

thorized, acquires an absolute title to the same, and 
may deal with it in the same manner as if dealing with 
any other kind of property." 
Adams vs: Burks, 1 0. G.,' 282. 

THE GOVERNMENT MUST PAY FOR A PATENT. 

" A patent is private property, and the government 
cannot after it is issued make use of the improvement 
any more than a private individual without license of 
the inventor, or making him compensation." 

Camraeyer & Lewis vs. Newton eif al.. 11 0. G., 287. 

James vs. Campbell 21 O.'G., 337. 

' ' The invention secured by letters patent is property, 
and as such is entitled to the same protection as any 
other property. Private property cannot be taken for 
public use without just compensation, except in cases 
of extreme necessity, in time of war or of immediate 
and im.pending public danger." 

Brady vs. The Atlantic Works 10 0. G., 702. 

ANNULING PATENTS. 

Isaac Van Hagen, of Chicago, 111., obtained a Pat- 
ent for an improvement in " Machine for punching and 
stamping Metals." April 25, 1871, No. 114,068. On 
June 26, 1871, Fred M. Huntington filed an applica- 
tion for a Patent for the same identical machine. An 
' ' interference ' ' was declared and it was established 
by proof that Huntington was the real inventor, and 
that Van Hagen had pirated the invention and sur- 
reptitiously procured the Patent ; accordingly the 
Commissioner granted a Patent to Huntington, thus 
putting him on a footing with the j&rst and illegal 
patentee. 

Baltimore, Md. 



56 

Thereupon Huntington brought suit in equity in the 
U. S. Circuit Court, for the xVorthern District of Illi- 
nois. The decree of the* court was rendered October 
3, 1873, and was that 

" The letters patent, No. 114,068, issued to the said 
defendant. Isaac Van Hagen, be, and the same is 
hereby revoked, vacated, and declared null and void, 
and of no effect," and " that the said defendant Isaac 
Van Hagen, do, within sixty days from the date here- 
of surrender and deliver up to the clerk of this court, 
the said letters patent, ' ' and the same shall be can- 
celed and transmitted to the Secretary of the Interior, 
Washington. 

"The practice that obtains in England as to the 
mode of procedure for the cancelation and annuling 
letters patent by scire facias does not obtain in this 
coMutry. 

' No statute of the United States confers or recog- 
nizes the existence of any such right, nor can any pre- 
cedent be found for the suing out of a writ of scire 
facias, or the bringing of a bill in equity to repeal or 
cancel the patent by the Attorney-General, in the 
name and behalf of the United States, either with or 
without a relator." 

The Attorney-Gen'l. vs. The Rumford Works, 9 0. 
G., 106. 

DECLARI^'G PATENTS INVALID. 

Sec. 4918. Whenever there are interfering patents] 
any person interested in any one of them, or in tha 
working of the invention claimed under either of thentf 
may have relief against the interfering patentee, an^ 
all parties interested under him, by suit in equitjj 

Mann & Co.. Patent Attorneys. 



57 

against the owners of the interfering patent ; and the 
court, on notice to adverse parties, and other due pro- 
ceedings had according to the course of equity, may- 
adjudge and declare either of the patents void in whole 
or in part, or inoperative, or invalid in any particular 
part of the United States, according to the interest of 
the parties in the patent or the invention patented. 
But 110 such judgment or adjudication shall effect the 
right of any person except the parties to the suit and 
those deriving title under them subsequent to the ren- 
dition of snch judgment. 

The power of decreeing the invalidity of patents is 
one of the chancery powers of the courts of the 
United States. 

Consequently where there are two or more patents 
for the same thing, (of which only one of course can be 
valid), the matter of invalidity can be authoritatively 
ascertained and decreed only by a Court of the United 
States having jurisdiction of such questions. 

" A bill in chancery has become established as the 
appropriate proceeding for vacating a patent from the 
Government." 

Mowrey vs. Whitney, S. C, 1 0. G-., 499. 

CAN A PATENT BE ATTACHED FOR DEBT 

"A patent is an incorporeal right existing as a 
whole throughout the United States, and cannot be 
attached or sold on execution for a debt of the owner." 

Stephens vs. Gladding, 17 Howard, 447. 

" A court of equity may direct the sale of the inter- 
est of an inventor in his patent in order to satisfy a 
judgment obtained against him in a court of law, the 
writ of execution having been returned imlla 'bona, 

Baltimore, Md. 



58 

and for that purpose will require the patentee to make 
an assignment of the patent, as provided in section 
4898, of the Revised Statutes of the United States, 
and in default of such assignment within a limited i 
time will appoint a trustee, with authority to execute ] 
the same." 

Murray vs. Ager, et ah, 20 0. G., 1311. 

The above decision was made at the January Term , 
1881, of the District of Columbia Court, and was af- \ 
firmed by the Supreme Court of the United States, 
March 6, 1883, as follows : 

" A Patent maybe subjected by bill in equity to the 
payment of a judgment debt of the patentee." 

" The decree below, appointing a trustee to execute 
an assignment, if the patentee should not himself 
execute one, being clearly within the chancery powers 
of the court, affirmed." 

21 0. G., 1107. 

" An assignment of a patent right made by a judge 
of probate and insolvency under a state law is ineffec- 
tual to transfer the title to the assignee without an 
instrument of conveyance from the debtor." 

Ashcroft vs. Walworth, 2 0. G., 546. 

" A Patent cannot be seized and sold by a sheriff 
under State laws. If a sheriff gets possession of letters 
patent by a levy, he merely has the custody, he cannot 
sell, transfer or convey the right ; he can give no title 
thereto." 

Banker vs. Caldwell, 4 Minn., 94. 

Stephens vs. Gladding, 17 Howard, 447. 

Bartlett vs. Crittenden, 5 McLeen, 82. 

" A patented machine may be levied upon and soL 
by a sheriff the same as any personal property, bi 
such a sale only passes a title to the material of whiol 

Mann & Co., Patent Attorneys. 



I 



59 

the machine is made, it conveys no riglit to use it as 
a machine ; should the purchaser so use it he would 
be liable as an infringer." 

Sawin vs. Guild, 1 Gallison, 487. 

Stephens vs. Cady, 14 Howard. 528. 

■ ' A Patent may be made available by a creditor for 
the payment of a debt, by a bill in equity invoking 
the courts to require the debtor patentee to make an 
assignment." 

Stephens vs. Cady, 14 Howard, 528, 530. 

From the foregoing it appears that a creditor may 
proceed against a debtor patentee under a State insol- 
vent law or a United States bankrupt law ; but that a 
sheriff cannot seize or attach a patent, as he might 
other personal property, under an execution. 

A Patent obtained for an invention made after an 
adjudication in bankruptcy, it is thought, would not 
be subject to any legal proceeding based on the old 
indebtedness. 

While a patented machine may be seized on an exe- 
cution and sold for the use of the material of which it 
is made, the letters patent or the patent right cannot 
be sold, except when the court compels the patentee 
+o execute an assignment. 

SUGGESTIONS TO A PERSON ABOUT TO BUY A PATENT. 

In taking an assignment of a jDatent or a part undi- 
vided interest, or a grant of a territorial right, require 
a warranty to be inserted in the deed as to title, and 
also, if possible, a warranty as to the validity of the 
Baltimore, Md. 



60 

patent. In the following form the italics illustrate 
warranty as to title. 

Form 1, Deed of Exclusive Right. 

TO ALL TO WHOM THESE PRESENTS SHALL COME. 

Whereas, Letters Patent of the United States, No. 
73,518, for an improvement in Wash Boilers, dated 
May 16, 18G8, was granted to David 0. Smith, of 
Elmira, Illinois, ivlio is noiv sole oivner thereof, and 
of all the rights under the same within the territory 
helow recited, whicli said rights Thomas Jones, of New- 
Dover, Ohio, is desirous of acquiring ; 

Now, Therefore, be it known. That for and in 
consideration of, etc. 

Where the purchase is of the Patent and the entire 
right, title and interest thereunder, a clause might be 
inserted transferring also all claims or right to dama- 
ges for infringement already committed. 

Another suggestion : do not pay for a purchased 
Patent, unless you can rely on the grantor, nutil three 
months have elapsed after the date of the assignment 
to you. This precaution is recommended because the 
law allows three months for the recording of assign- 
ments. 

A safe way is for the patent owner to execute the 
deed and deliver it to a third person, who will hold it 
for three months, and if no assignment of the same 
right is then found of record the purchase money 
shall be paid and the deed becomes operative, being 
placed on record just previous to the expiration of the 
three months. In law this is called an escroiv. 
Mann & Co., Patent Attorneys. 



ENFORCING PAYMENT FOR PATENT RIGHTS. 

' ' Equity will enforce a lien for purchase money, 
but it does not vacate a transfer, because tfie purchase 
money has not been paid." 

Perkins vs. The Electric Light Co., 24 0. G., 204. 

" A void Patent (that is one that has been decreed 
invalid by a Court), is not a good consideration for a 
promissory note." 

iSTye vs. Raymond, 16 111., 153. 

" If a note is given for a patented machine and the 
exclusive right to use the same for a certain territory, 
the patentee is not entitled to anytliing beyond the 
value of the machine, if the patent is void." 

Earl vs. Page, 6 N. H., 477. 

" If a patent right is sold with a warranty as to the 
practicability of the invention, and the machine or 
process cannot produce the result warranted, there is 
an entire failure of consideration, and no recovery can 
be had on a note given therefor." 

Hawes vs. Twogood, 12 Iowa, 582. 

'•If a note is given for a patent right, and the in- 
vention is worthless because the machine cannot be 
made to work, the note is void for want of considera- 
tion. ' ' 

Cragin vs. Fowler 34 Vermont, 326. 

' ' The mere fact that an invention lacks utility in 
its application to any one of the several objects for 
which it is patented, will not prevent a recovery upon 
ii note given for an interest therein." 

Midkiff vs. Boggess, 15 Ind., 210. 

' ' A mere assertion by others that the thing patented 
is an infringement of a prior patent is no defense to 
an action on a note given by a purchaser of a patent 
right." 

Davis vs. Gray, 17 Ohio, Stat., 380. 



^ -Us 

k 



Baltimore. Md. 



62 

" If the purchaser has assigned his interest in the 
patent to another, he cannot, in an action hj the pat- 
entee npoti the note given for the right, set np a 
defense of a failure of consideration." 

Thomas vs. Quintard, 5 Duer, 80, 

"If the suit is on the convenants in a sealed instru- 
ment to enforce payment for the right, a good and 
valuable consideration is implied from the solemn form 
of the promise in writing and under seal, and the in- 
validity of the patent cannot be set up as a defense." ' 

Wilder vs. Adams, 2 W. and M., 329. : 

' ' If the purchaser has derived benefit from the use ' 
of the patent; and there is no fraud, and the patent 
is valid, he has no good defense against a note given ; 
for the right." 

Holden vs. Curtis, 2 N. H., 61. 

" A representation in regard to the durability, sal- 
ability and cost of articles manufactured according to 
a patented design, is a mere matter of opinion, and will 
not vitiate a sale of a patent right even though it is 
false." 

Miller vs. Young, 33 111., 354. 

*' The assignment of an interest in a patent, where 
there is no fraud, is a sufficient consideration to enable 
a party to recover on notes given therefor, although 
the invention may be practically of little or no value." 

Myers ys. Turner, II Ills., 181, (1855). 

A State Law which makes void a promissory note 
given for a Patent, unless the words "given for a pat- 
ent right" are written across the face of the note, 
decided by the Pennsylvania Supreme Court, Judge 
Sharswood, to be void, and to have no effect — the note 
is good nevertheless. 

Haskell vs. Jones, opinion filed at Harrisburg, Pa. 
March 4, 1878. 

Mann & Co., Patent Attornej^s. 



63 

Where the words " given for a patent right " were 
written in the note as reqnired by the State Law, it 
was decided they ailorded no protection whatever to 
the drawer of the note, that in a suit brought to re- 
cover the amount of the note he could not plead any 
of the defenses pro^ided by such statute, the same be- 
ing unconstitutional. 

Decision Judge Swing, April, 1877, U. S., District 
Court, Cincinnati, 0. 

STATE LICENSE TO SELL RIGHTS. 

The law is well settled that Inventors are not re- 
quu'ed to take out a license anywhere within the limits 
of the United States, to sell Rights under a Patent. 

A Patentee or his Agent is free to go into any State 
and there negotiate a sale of his Patent ; he may do- 
this as freely as a man owning a town lot in the city 
of Washington, D. C, might anywhere negotiate a 
sale privately of his real estate. 



Baltimore, Md. 



INFRIXGEMENT. 



Sec. 4919. Damages for the infringement of any 
patent may be recovered by action on the case, in the 
name of the party interested, either as patentee, as- 
signee, or grantor. And whenever in any such action 
a verdict is rendered for the phiintiff, the court may 
enter judgment thereon for any sum above the amount 
found by the verdict as the actual damages sustained, 
according to the circumstances of the case, not ex- 
ceeding three times the amount of such verdict, to- 
gether with the costs. 

It is an inf ringemeut of a Patent to make a patented 
article, to use a patented article, or to sell the article 
when made by one unauthorized. The law vests the 
exclusive right in the patentee to do each and all of 
these things. A person cannot make for his own per- 
sonal use without infringing, nor can a person make 
for exportation to foreign countries without in- 
fringing. The intent to infringe is not even neces- 
sary, and the patentee need not notify an infringer 
before bringing suit ; for the patent is, in the eye of 
the law, notice of the patentee's rights to all the world. 

One thing should be borne in mind when consider- 
ing a question of infringment, to wit : if the thing 
claimed is the first of its kind, it would of course in- 
clude all real equivalents in the broadest sense ; bnt, 
on the other hand, if the thing claimed is simply an 
Mann & Co., Patent Attorneys. 



65 

improvement upon something already known for the 
same purpose, then those things only are infringe- 
ments Avhioh are mere "colorable evasions." The first 
essential to a proper determination of a question of 
infringement is to ascertain exactly the scope of a 
patent. This necessitates a knowledge of the " state 
of the art " at the date when the patent was issued. 

Each case rests upon its own peculiarities. The 
scope of any Patent is governed by the inventions of 
prior date, and can only be determined by a careful 
study of analogous prior patents. 

To determine whether a certain article is an in- 
fringement of a patent it must be compared separately 
with each clause of claim in the patent ; for if any 
clause of the claim is infringed, the patent is infringed. 
The claim is the vital part of a patent, and the ques- 
tion of infringement must be determined upon the 
claim.* 

*Weare prepared to advise and assist Patent owners 
to determine tlie question , in any given case, as to 
whether tlieir patent is infringed. Our cliarge I'or such 
service will always be moderate and reasonable. 

Information and assistance afforded lawyers in gen- 
eral practice, who may have Patent Causes, touching 
the validity or scope of particular Patents, and upon 
questions of infringement.. 

Having access to all the original patents, models, 
drawings, public records, and all other accessible docu- 
ments pertaining to the I'atent Office, we are prepared 
to make examinations and give icritten and carefully pre- 
pared opinions upon all infringement questions, together 
with a digest of other patents bearing upon the case, 
upon moderate terms. 

MANN & CO., 

PATENT ATTORNEYS, 
No. 116 W. Baltimore St., 

Baltimore, Md. 

Baltimore, Md. 



A person cannot use tlie patented invention of an- 
other for the reason that he has made an improvement 
on it. 

"It is an infringement when a patented device is 
uf'.ed for the same purpose for which it is used by the 
patentee, although it is made to fulfil additional func- 
tions. ' ' 

Sarven vs. Hall, 1 0. G., 437. 

" Claims are to be construed by the state of the art, 
■even though the patent contains no acknowledgement 
of it." ^ \ 

22 0. G., 771. 

" To constitute infringement there must be — first 
similarity of design (construction) ; second, substan- 
tial identity of purpose or result." 

Henderson et al. vs. Cleveland Stove Co., 15 O.G., 4. 

" To constitute an infringement the thing used by 
the defendant must be such as to substantially embody 
the patentee's mode of operation, and thereby to ob- 
tain the same kind of result as was reached by his 
invention." 

Sewell, adm'r of Clark, vs. Jones et al., 9 0. G., 47. 

' ' The burden of proof is upon complainant to show 
that the defendant has infringed the patent under 
which he claims." 

Fuller and Barnum vs. Yenzer, et al.., 11 0. G., 597. 

Imhauser vs. Buerk, 17 0. G., 795. 

" A patentee is not necessarily confined to the pre- 
cise arrangement in the construction of his machine 
as specified in the patent. 

Bantz ys. Elsas, et al., 6 0. G., 117. 

" A patentee is entitled to the exclusive use of the 
mechanical organization, device or means for all the 

Mann & Co., Patent Attorneys. 



uses and purposes to which it can be applied — to the 
imlooked for as well as to the contemplated." 

McComb el al., vs. Brodie, 2 0. G., 117. 

Wells vs. Jaques, 5 0. G., 364. 

Stow vs. City of Chicago, 21 0. G., 790. 

"If the defendant has incorporated the devices 
covered by the plaintiff's patent into his machine, he 
is liable as an infringer, although it contains other 
different features." 

Buerk vs. Valentine, 2 0. G., 295. 

" Defendants treated tobacco in a method similar 
to the process patented by plaintiffs, except that de- 
fendants made use of an equivalent for the gum-arabic 
used by the plaintiff's to produce the same effect as 
that rendered by plaintiffs' process. Held, that this 
was infringement." 

Kimball vs. Hess, 26 0. G., 107. 

WHEN NO INFRINGEMENT. 

Anyone is privileged, in making an improvement, 
to evade a previous patent if he can ; but he must not 
use the devices secured to the patentee. If he invents 
something new and material, and thus effects the same 
object, there is no infringement. 

" While patents are to be construed liberally, they 
should not be so construed as to enable patentees to 
reach out and cover every improvement or invention 
which, after seeing the same, they conclude they might 
have embraced within their patent, but which was not 
so embraced and included." 

Trader et al., vs. Messmore, 7 0. G., 385. 

• ' "A patented combination is not infringed by a ma- 
chine in which one of the ingredients is omitted." 
Dunbar and Hopper vs. Myers, 11 0. G., 35. 

Baltimore, Md. 



68 

"Unless every element embraced in a combination 
is used, or some equivalent for it, a patent for it is not 
infringed." 

Brown vs. Hinkley & Cole, 3 0. G., 384. 

"Where the distinguishmg feature of a patented 
device consists alone in its peculiar construction, an- 
other which is constructed differently is no infringe- 
ment of the patent, although it produces the same 
results." 

Reckendorfer vs. Faber, 5 0. G., 697. 

■' A patent for a combination is not infringed unless 
all tha elements enumerated are used, or the equiva- 
lents of those which are omitted are substituted for 
them." 

Westlake vs. Cartter, 4 0. G., 636. 

INFRINGEMENT SUITS. 

Suits for infringement can only be brought in the 
name of the owner or joint owners of the legal title to 
the patent throughout the whole of the United States, 
or in the name of the owner of the particular territory " 
of the United States in which the action is brought. 
A licensee cannot bring such an action, except in an 
equity suit he join with him the party or parties in 
whom the legal title to the patent is vested within the 
territory over which the United States Court wherein 
the action is brought has jurisdiction. 

As the patent law now stands, there are two ways 
for a patentee to recover for an infringement of his 
rights. He may proceed at law and recover damages, 
that is, what he has lost by means of the infringement; 
or he may proceed in equity to recover the infringer's 

Mann & Co., Patent Attorneys. 



profits, or the saving affected by the use of the pirated 
appliance or process. 

These two courses are adapted to two entirely dif- 
ferent classes of patents, though in many cases the 
patentee may elect which course he will pursue in case 
of infringement — both being open to him. Where the 
value of the patent consists wholly in the right to 
make and sell the thing patented, the rule of damages 
is applicable. Where the value of the patent consists 
wholly in the use of the patented appliance or process , 
cases of infringement go to Courts of equity, and the 
amount of the patentee's money recovery is measured 
by the infringer's gains through the infringement. In 
an action at law the plaintiff recovers actual damages. 

" The person who may bring a suit for infringement 
is only he who owned the patent at the time the in- 
fringement was committed. A patentee may, there- 
fore, after he has sold and transferred his patent, 
bring suit to recover damages for an infringement 
committed before the patent was sold." 

Moore vs. Marsh, 7 "R^'allace 515. 

"A suit for an infringement committed after the 
sale and transfer was made must be brought in the 
name of the assignee." 

Herbert vs. Adams, 4 Mason, 15. 

" Recoupment is a matter never pleaded in bar to 
a suit for infringment." 

Birdsell vs. Perego, 5 Blatchford, 251. 

" Where a suit is based upon a contract in relation 
to a Patent, the violation of the same by the patentee 
may be availed of by way of recoupment of damages, 
but not in bar of the action." 

Pitts vs. Jameson, 15 Barb., 310. 

Baltimore, Md. 



70 

' ' The clear purport of the provisions of the Revised 
.Statutes relative to suits for infringement of patents 
is that such suits must be brought in the name of the 
real and beneficial party in interest." 

Goldsmith et al. vs. The American Paper Collar 
Co., 19 0. G., 192. 

" No person can bring a suit for profits or damages 
for infringement who is not the patentee or such an 
assignee or grantee as the statute points out." 

Gordon vs. Anthony et al., 16 0. G., 1135. 

' ' In all cases where an assignment does not pass the 
legal title, and is not absolute and unconditional, or 
there are remaining rights or liabilities of the assignor 
which may be affected by the decree, he is a necessary 
party to the suit." 

Cook et al., vs. Bid well, 20 0. G., 1083. 

' ' Several patents may be included in the same suit 
when their subjects are corelative, and the inventions 
claimed are embodied in the same ijifringing machine. 
Demurrer for this cause overruled." 

Nellis ^5. The Pennock Manufacturing Co., 20 0. 
G., 1131. 

WHERE SUITS MUST BE BROUGHT. 

The Circuit Courts of the United States have origi- 
nal jurisdiction of all suits at law or in equity arising 
under the patent or copyright laws ol the United 
States and is exclusive of State Courts. This has 
refei-ence to suits for infringement, to enjoin the use 
of a patented invention, and to an account and dis- 
covery. 

"The jurisdiction of the circuit courts in cases 
arising under the patent laws is not changed by the 

Mann & Co. , Patent Attorneys. 



ic 
br 



i 71 

Revised Statutes, and consequently the original cog- 
nizance of the circuit courts sitting as courts of equity 
in patent cases is retained." 

Cochrane etal, vs. Deener et al., 11 0. G., 687. 

Where the suit is on a contract, and there is no 
question of infringement, a State Court has jurisdic- 
tion, and when such a case is before it properly the 
validity of the Patent may be inciclently inquired into. 

" The subject matter of contracts made in relation 
to patents, where neither the validity of the patent 
nor its infringement is concerned in the controversy, 
does not give the courts of the United States jurisdic- 
tion. The rights of the patentee under the patent 
laws of the United States must be directly, and not 
collaterally, brought in issue to give jurisdiction." 

Teas vs. Albright, et al., 23 0. G., 2069. 

LIMITATIONS OF ACTIONS. 

In ordinary actions at common law brought in 
United States courts, the statutes of limitation of the 
State where the suit is brought may be pleaded in bar, 
but such pleading will not apj^ly to an action (suit) 
for the infringement of a patent, because the right of 
action is not at common law, but is under the Consti- 
tution and laws of the United States, which clothe the 
United States Courts with exclusive jurisdiction over 
the whole subject. 

Section 55, Statute July 8, 1870, enacted : 

' ' All actions shall be brought during the term for 
which the Patent shall be granted or within six years 
after the expiration thereof." 

Baltimore, Md. 



72 

But this was repealed, by the adoption of the Re- 
vised Statutes, June 22, 1874. 

" The Legislature of a state cannot pass an act lim- 
iting the time for bringing an action in the Federal 
courts for the infringement of patent rights." 

Anthony vs. Carroll, 9 0. G., 199. j 

An action at law for the recovery of damages for 
past infringement of a patent, may be brought after 
the expiration of the term of the Patent. 

" The provisions of Sec. 721, U. S. Revised Statutes 
apply to Patent cases ; by this section State statutes 
of limitation are applicable to actions at law for the 
infringement of a patent." 

Hayden vs. The Oriental Mills, 24 0. G., 601.— U. 
S. Dis. Court, R. I. 

INJUNCTION. 

Sec. 4321. The several courts vested with jurisdic- 
tion of cases arising under the patent laws shall have 
power to grant injunctions according to the course and 
principles of courts of equity, to prevent the violation 
of any right secured by patent, on such terms as the 
court may deem reasonable ; and upon a decree being 
rendered in any such case for an infringement, the 
complainant shall be entitled to recover, in addition 
to the proiits to be accounted for by the defendant, . 
the damages the complainant has sustained thereby ; 
and the court shall assess the same or cause the same 
to be assessed under its direction. And the court 
shall have the same power to increase such damages, 
iu its discretion, as is given to increase the damages 
found by verdict in actions in the nature of actions of 
trespass upon the case. 

Injunctions are either provisional or perpetual. The 
plaintiff may at the commencement or during the pro- 
Mann & Co., Patent Attorneys. 



73 

gress of a suit ask the court for a provisional injunc- 
tion to restrain the defendant from infringing during 
the time the suit is before the court. It is entirely 
within the discretion of the judge to grant or to re- 
fuse a provisional injunction ; to warrant the court in 
the exercise of this power there must have been a long 
and unquestioned use of the Patent : there must be 
but little if any doubt as to the validity of the Patent; 
there must be a serious injury impending or threat- 
ened, and the court must be satisfied tiiat the rights 
of the plaintiff can be protected in no other way. 

" The Court will not lend its extraordinary aid, by 
way of preliminary injunction to any claimant who 
has encouraged or acquiesced in an infringment of his 
right, or unreasonably delayed in prosecuting for its 
violation. Compensation for damages accrued and 
protection from future damages is all such a complain- 
ant is entitled to." 

Jones et al. vs. Merrill & Soule, 8 0. C, 401. 

In an application for preliminary injunction, where 
issues of fact are presented, supported on one side by 
affidavits, and contradicted by affidavits upon the 
other side, which thus neutralize each other, a motion 
for the allowanceof such an injunction will be denied." 

Beane vs. Orr et al., 9 0. G., 255. 

" An injunction against infringing a patent will be 
granted only when the patentee shows either that he 
has recovered a judgment on it in a suit, or that he 
has used and enjoyed his right under it so long as to 
warrant the presumption that the public have acqui- 
esced in it." 

Brown vs. Hinkley & Cole, 3 0. C, 384. 

''Doubts being entertained whether a patent was 

Baltimore, Md, 



74 

not invalid for want of noA^elty in the invention, a 
preliminary injunction was refused," 

Fales & Chipman vs. Wentworth, 1 0. G., 58. 

' ' Where a statute authorizes or prescribes the in- 
fliction of a fine as a punishment for a contempt of 
court, it is lawful for the court inflicting the fine to 
direct that the party stand committed until the fine 
is paid, although there be no specific aflirmative grant - 
of power in the statute to make such direction." 

Fischer rs. Hayes, 20 0. G., 601. 



Sec. 4919. Damages for the infringement of any 
patent may be recovered by action on the case, in the 
name of the party interested, either as patentee, as- 
signee or grantee. And whenever, in any such action, 
a verdict is rendered for the plaintiff, the court may 
enter judgment thereon for any sum above the amount 
found by the verdict as the actual damages sustained, 
according to the circumstances of the case, not exceed- 
ing three times the amount of such verdict, together 
with the costs. " 

In a suit at law the plaintiff must present evidence 
to enable the jury to fix the amount of damages, but 
the damages cannot exceed the amount claimed in the 
declaration. 

In an equity suit the plaintiff does not prove the 
extent of damage until the court decrees upon the 
question of validity of patent and its infringement by 
defendant ; then the cause is referred to a master-in - 
chancery, who takes proof and determines the amount 
of damages. 

The defeated party pays all legal cost, but these do 
not include counsel fees or other expenses incurred. 
Mann & Co., Patent Attorneys. 



75 



" In an action for infringing a patent, the damages 
are not to be estimated according to what the defend- 
ant has made, or might hare made, but according to 
what the plaintiff has lost." 

McComb et al. vs. Brodie, 3 0. G., 117. 

"In equity, under the existing laws (1876), a com- 
plainant can recover both the profits gained by the 
defendant and- the damages lost by the complainant." 

Goodyear Dental Vul. Co. vs. Van Antwerp, 9 0. 
G., 497. 

" In an action at law the jury finds the actual dam- 
ages sustained by the plaintifi'. The court has power 
in such cases to enter judgment for any sum above the 
amount of the verdict, not exceeding three times the 
amouTit of the same, together with costs." 

Birdsall and Langtry vs. Coolidge, S. C, 10 0. G., 
748. 

" In settling an account for infringement the ques- 
tion is not what profits the infringer has made in his 
business, or from his manner of conducting it, but 
what advantage he has derived from the use of the 
infringed invention." 

Eailroad Companies vs.. Turrill, S.C, 13 0. G., 709. 

" If the owner of a patent has an established license 
fee for persons doing the class of business in which the 
defendants were engaged, the amount of such fee is his 
loss or damage for the use of the invention by them 
without a license." 

Emerson et al., vs. Simm et al. 3 0. G., 393. 

" If the patentee is engaged in manufacturing the 
patented article for sale, his damage will be manufac- 
turer's profits." 

Westlake vs. Cartter, 4. 0. G., 636. 

" Interest on profits cannot be recovered." 
15 0. G., 965. 

Baltimore, Md. 



JOINT OWNERSHIP OF PATENTS. 



UNDIVIDED INTERESTS. 1 

So many patents are held and owned jointly by two 
or more persons that it is an important matter to all 
persons thus interested to rightly understand the na- 
ture of the ownership each person has in the Joint 
property. 

In the case of a patent granted to two or more joint 
inventors, or where an inventor assigns an undivided 
interest in his patent to others, the nature of such 
joint ownership may seem plain enough, but it is evi- 
dent a good deal of misconception exists among in- | 
ventors as to the real scojje of the relation that joint 
owners bear to each other. 

The ordinary relation of co-partner, as understood 
at common law, and as exemplified in the case of two 
parties trading together as a firm, does not follow as 
a result of the connection of two or more persons 
owning undivided interests in a patent. 

It has never been judicially asserted that the several 
part owners of a patent were liable in law to contri- 
bute, in the proportion of their respective ownership, 
to make good a loss sustained by an unfortunate ope- 
ration of one part owner with his patent privilege. 
Mann & Co., Patent Attorneys. 



77 



A PART OWNER 



Of a patent may, in the absence of any contract, as- 
sign his interest or any fractional part thereof, or he 
may, either alone or in company with others, purchase 
or make as many machines as he pleases, and may sell 
them to others with the right to use or sell them, or 
he may refuse to sell them, and may rent them ; but 
he has no power to compel contribution of profits or 
losses, nor to enforce a partition of the right. 

According to the law of partnership all the co-part- 
ners are liable, and each must bear his share of any 
loss incurred by the action of one partner in the usual 
course of business. But such is not the law of Co- 
Ownership of Patents. 

THE LAW — TENANTS IN C03IM0N. 

When an inventor assigns an undivided interest in 
his patent — that is, as it were, takes a partner, giving 
him a fourth or a half interest, as the case may be — 
he by such assignment divests himself of the exclusive 
right and privilege he before possessed as sole owner ; 
and also he confers on this assignee^now become a 
part owner — the same equally full rights and privile- 
ges which the patent granted to him before alone, and 
thenceforward the rights and privileges of the patent 
are to be held, enjoyed and exercised in common by 
the two parties ; not that eacTi part owner shall share 
in proportion to his ownership, but that either one 
may freely exercise all the rights and privileges se- 
cured by the patent. It is common property, to be 
Baltimore, Md. 



78 

used by both or hy either one without liability t 
share his gains, or to account therefor to the othei 
part owner, because in law they are " tenants in com- 
mon." If three or four parties possess the right of 
way over real estate — hold that privilege in common 
— and one does not use the way, he could not compel 
the others to account to him for their use ; thus 1 ty 
analogy one part owner of an undivided patent priv- 
ilege has as good a right to make, use and sell, and 
license or permit outside parties to make, use and sell 
the thing patented as the other. Such parties must 
be regarded as having interests whicli are distinct and 
separate in their nature, though derived from the 
same instrument ; and having the same interests, 
with the right to use them separately, they cannot, 
for any legal use of them, incur any ol)ligation to each 
other. Neither part owner can enjoin or prevent the 
other from making, using and selling the thing pat- J 
anted. | 

This view of the subject is sustained by the decision 
of the Supreme Court of Massachusetts in the case of 

Vose vs. Singer, 86 Mass., 226 (1862). 

Clum vs. Brewer, 2 Curtis, 524. 

Dunham vs. Ind. & St. Louis R. R. Co., 9 Chicago 
Legal News, oO. 

And a decision by Judge Druuiraond, of the U. S. 
Circuit Court, JSTorthern. District of Illinois. 

" A part owner of a patent has no right to use an 
infringing device. If he does, he is liable to his co- 
owner for the wrong done. 

WJien a part owner of a patent sues a co-owner 

Mann & Co., Patent Attorneys. 



79 

for using an infringing device, the recovery, if any, 
will be in projDortion to their respective interests. 

He has, by virtue of the joint ownership, a right to 
use the patent, bnt he has no right, more than a 
stranger, to infringe the same." 

Herring vs. Gas Consumers' Association, 21 0. G., 



A DISTINCTION. 

A technical distinction respecting the rights of joint 
owners might be drawn, as ^here the Patent issues 
to joifit inventors — all being named in the grant — 
their respective rights would be precisely alike, but 
where a sole inventor assigns, previous to issue of 
patent, an undivided one-half or one-third interest, 
and so named in the grant, it would seem to justify 
the inference that the proceeds or profits were intended 
to be divided in the same proportion ; and in a proper 
case a court of equity would be likely to sustain this 
view and require one owner to account to the other 
on such specified basis. 

See Pitts ef al. vs. Hall, 3 Blatchford, 201. 

One joint owner cannot legally sell or transfer any 
exclusive right ; he can give a good title to his own 
interest but cannot transfer the right of the other 
joint owner. 

A manufacturer holding a shop-right license (not 
exclusive) from one joint owner, who is one of the 
original patentees, the proportion of whose interest is, 
like that of the other patentees, unspecified, is not 
liable to account to the other joint owners. 
Baltimore, Md. 



80 

It is unnecessary to enlarge upon the importance of 
so guarding the common property, that the interest 
of each joint owner may not become impaired by the 
business entanglements or unfair acts of the other. 



I 



Aiaiiii & Co., Patent Attorneys. 



STATE LAWS. 



In some of the States, laws have been passed with 
the view of regulating the sale of patent rights. These 
regulations have for their object to prevent fraud, and 
might be enforced if the States had any power to 
legislate on the subject of patents, directly or indi- 
rectly. 

The constitution of the United States (article 1st, 
section 8,) confers on Congress alone the power to 
pass laws regulating copyrights and patents, just the 
same as it gives to Congress the power to make laws 
regulating the postal affairs. 

It is well understood that no State has any right or 
power to interfere with the mails or postoffice matters, 
because these are national affairs, the exclusive regu- 
lation of which was relegated by the States to the 
General Government. Now United States patents 
are precisely to the same extent a national matter also, 
subject only, like postal matters, to the laws and reg- 
ulations of the General Government . 

Previous to the adoption of the Constitution the 
different States had repeatedly granted patents for in- 
ventions. Reference to this is made in the Patent 
Office report for 1850 ; but since the adoption of the 
Constitution no one has heard of a State of the Union 
granting a patent for a new invention . It must be 
Baltimore, Md. 



82 

clear, then, to the most ordinary comprehension, 
that States which have passed laws attempting to 
regulate the sale of patents have done what they had 
no shadow of right to do, and consequently all State 
laws designed to regulate the sale of patent rights are 
unconstitutional, and therefore null and void. 

Among the States that have passed these absurd 
and invalid laws are Pennsylvania, Ohio, Michigan, 
Indiana, Nebraska, and perhaps other Western States. 

The judicial decisions bearing on this question are 
very conclusive. 

DECISIONS. 

Circuit Court of the United States — District of j 
Indiana. 

Before the Hon. David Davis, one of the Judges of 
said Court, May 30, 1870. Case : Major J. Robinson 
— Petition for writ of habeas corpus. 

The facts in this case were as follows : Robinson 
was the travehng agent of the owners of a patent 
granted to Goodyear & Cummmgs, and was selling 
county rights under said patent. On the 23d of May, 
1870, Robinson oifered to sell the right of Grrant 
county to Harrison H. LaFever, a dentist, for $100, 
which LaFever agreed to pay. Before the sale was 
completed the district atttomey of the county institu- 
ted proceedings against Robinson, under the provis- 
ions of a State law, (3 Indiana Statutes, 464), which 
took effect April 23, 1869. Robinson was charged 
with not complying with the terms of the law, (selling 
rights without a license), and was committed to the 
county jail ; thereupon his counsel petitioned the 
United States CoUrts at Indianapolis for a writ of 
habeas corpus. 

Mann & Co., Patent Attornevs. 



83 

Judge Davis decided that property in inventions 
exists by virtue of the laws of Congress, and no State 
has a right to interfere with its enjoyment. If the 
patentee complies with the laws of Congress on the 
subject, he has a right to go into the open market, 
anywhere within the United States, 'and sell his prop- 
erty. If this were not so, it is easy to see that a State 
could impose terms which would result in a prohibi- 
tion of the sale of this species of property within its 
borders, and in this way nullify the laws of Congress. 
It is clear this kind of legislation is unauthorized, for 
it throws burdens on the owners of this kind of prop- 
erty which Congress has not seen fit to impose on 
them. It attempts to punish a patentee for doing 
with his property what the National Legislature has 
authorized him to do, and is therefore void. 

Robinson is ordered to be discharged. 

" Should the Legislature of a State pass an act in 
express terms limiting the time for bringing an action 
in the Federal Courts for infringement of patent 
rights, there can be no reasonable doubts that such a 
statute would be unconstitutional and void." 

Anthony et al. vs. Carroll, 9 0. G., 199. 

Also, Pindar vs. Kelley, S. C. Vermont, Am. Law 
Reg., September, 1876, 511. 

Another decision is given, because in the case de- 
cided the question was as to the constitutional validity 
of the State law, requiring notes given for a patent 
right to have the words " Given for a Patent Right " 
written or printed on the face of the obligation. 

Huntington Circuit Courts — State of Indiana. 
Helm vs. The First National Bank of Huntington. 
Baltimore, Mel. 



84 



Buskirk, J. — This is an appeal from a judgment of 
the Court below, rendered on a promissory note to 
which Helm, who was defendant below, pleaded in 
substance that his said note, the subject of this suit, 
was given for a patent right, and that said note was 
invalid and void by reason of not having the words ' 
" Given for a Patent Right " inserted thereon, as re- 
quired by the statute of the State. Third Indiana 
Statutes, 364. 

The second section of the act referred to provides 
that the words named shall be inserted in the body of 
the obligation. 

The third section jDrovides a penalty, to which any 
person shall be subject who takes an oljligation for a 
patent right without complying with this requirement. 

If the Legislature of this State possessed the con- 
stitutional power to enact the law in question, there 
can be no doubt that a note taken in violation of its 
provisions would be illegal and void. 

The eighth section of the first article of the Consti- 
tution of the United States confers on Congress the 
power ■" to promote the progress of science and useful 
arts by securing for limited times to authors and in- 
ventors the exclusive right to their respective writings 
and discoveries." 

It is insisted by counsel for appellee (the Bank) that 
the above grant of powers confers upon the National 
Government the exclusive power to legislate on the 
subject of patents, and that consequently the Legis- 
lature of this State possesses no power to legislate on 
the subject. 

The Federal Government has, continuously, from 
the adoption of the Constitution down to the present 
time, legislated on the subject of patents and patent 
rights. Such legislation has covered the entire ground, 
for it has not only regulated the manner in which a 

Mann & Co., Patent Attorneys. 



patent may be obtained from the General Government 
but it has prescribed the manner in which such right 
may be sold and conveyed, and has imposed penalties 
for the infringment thereof. * * -•• "'■■ * 
We are of the opinion that the Legislature of Indiana 
possessed no power to pass tlie statute under consider- 
ation, and it must, therefore, be held unconstitutional 
and void." 

The judgment is affirmed, with costs. 

See also the Decision of Judge Swing, of tlie United 
States District Court, Southern District of Ohio, and 
the Decision of Judge Sharswood, Supreme Court of 
Pennsylvania, referred to in this book under the- head- 
ing '•' Enforcing Payment for Patent Rights." 

"The act of'' February 18, 1873, entitled " An act 
to regulate the sale of patent rights in the State of 
Xebraska, and prevent frauds connected therewith." 
is in conflict with the constitution and laws of the 
United States and is void. 

Wilch vs. Phelps. 2o 0. G., 981, Supreme Court of 
Xebraska, Decided March 22, 1883. 

It must not be understood, however, that patented 
articles or machines are exempt from taxation, for 
they are subject to an impartial taxation on the same 
Imsis as other personal property not patented. 

' ' A State may require the taking out of a license 
for the sale of a manufactured article, and the fact 
that the article is produced under a patent will not 
defeat this power. ' ' 

Webber vs. Virginia, 20 0. G., 369. 

" A city ordinance prescribed a tax upon pedlers, 
etc. The defendant was convicted of selling from 
door to door, without a license, a patented article. 
Held, that the patent did not prohibit the municipal- 
ity from imposing such tax." 

People vs. Bussell, 25 0. G., 504. Supreme Court 
of Michigan, decided January 3, 1888. 

Baltimore, Md. 



ASSIGNMENT OF PATENT RIGHT. 



Sec. 4898. Every patent or any interest therein 
shall be assignable in law by an instrument in writ- 
ing ; and the patentee or his assigns or legal represen- 
tatives may, in like manner, grant and convey an ex- 
clusive right under his patent to the whole or any 
specified part of the United States. An assignment, 
grant or conveyance shall be void as against any sul >- 
sequent purchaser or mortgagee for a valuable consid- 
eration, without notice, unless it is recorded in the 
Patent Office within, three months from the date 
thereof. 

An assignment is an instrument, in writing, con- 
veying either the whole interest in a j^atent or an iin- 
divided part thereof. It is not necessary that the 
document should be under seal, or that it should be 
acknowledged. It must convey to the assignee all 
the rights, as to the portion of the patent assigned, 
which was before vested in the original patentee. 
These rights are — the right to make, the right to use. 
the right to vend to others to use, and the right to 
convey any and all of the first three rights mentioned 
to other parties. Any instrument which does not con- 
vey all these rights is a mere license. 

An assignment may be made either before or after 
the patent is issued, and is equally within the provi- 
sions of the law. 



Mann & Co., Patent Attorneys. 



Jl 



' ' One holding an assignment or a grant is author- 
ized by the statute to prosecute, in the Circuit Court 
of the United States, any action that may be neces- 
sary to protect his rights under the patent." 

Littlefield and Jagger vs. Perry, 7 0. G., 964. 

' ' Inventions may be assigned before they are pat- 
ented." 

Cammeyer and Lewis vs. iSTewton, 11 0. G., 287. 

A clause of forfeiture for non-performance, con- 
tained in a deed does not reduce the grantee to the 
position of a licensee, because the title has passed. For 
non-payment or other non-performance a forfeiture 
may be enforced in the courts ; but until it is enforced 
the title granted remains in the assignee. 

Littlefield and Jagger vs. Perry, 7 0. G. , 964. 

A grant is an instrument, in writing, conveying the 
whole right to a patent throughout a specified por- 
tion of the United States, and must convey the same 
rights as an assignment as to the territory specified^; 
otherwise the conveyance is only a license. 

A grantee can bring a suit in his own name for in- 
fringement, but only in the district owned by him. 

If the owner of a territorial right holds his title in 
the broadest sense, that is, holds "-all the right, title 
and interest" which the original patentee held, he 
may sell the patented article to others, and they (the 
purchasers) may take the same outside of the grantee's 
territory to any part of the United States, and there 
use the article without liability for infringement. 
But the case would be different, perhaps, if the owner 
of the territorial right was restricted in one single 
Baltimore, Md. 



88 

particular, namely : if the patentee in giving a deed 
to the right, should insert a clause to this effect — '*on 
the condition that all Wash Boilers {or icliatever the 
article is) embracing said patented improvements sold 
by virtue of this authority, shall be used and sold by 
the purchasers thereof only vrithin the territory herein 
named ; and that all wash boilers shall have stamped 
upon them the words "Licensed for use only in the 
State of Ohio. " It is advisable for patentees in all 
proper cases to insert in the deed to territorial right 
such a stipulation. 

The decisions bearing on this point are 

Adams vs. Burke, 1 0. G., 282. 

McKay vs. Wooster, 3 0. G-., 441. 

See also in this book under the head " The rights of 
a purchaser of a Patent Article." (Page 53.) 

LICENSE TO USE PATENT. 

A license is a permit or authority to make, to use, or 
sell the thing patented, or to do two or all of these 
three things ; and it may be an exclusive right to do 
all these things throughout the whole United States, 
and yet not amount to an assignment, unless it include 
the right to convey all these rights to others. A pat- 
ent owner may give one person the exclusive right to 
make the patented article in a certain district, or 
through the whole United States ; he may give to an- 
other the exclusive right to use, and to still another 
the exclusive right to sell ; or he may give to different 
persons a common right to make, or to use, or to sell, 
Mann & Co., Patent Attorneys. 



89 

in a certain territory or throughout the whole 
United States. Or, if the invention is susceptible of 
a variety of applications, the patent owner may permit 
one person to employ the improvement for a stated 
use, and other persons to employ it for other and dif- 
ferent uses. 

An inventor enters into a written contract with a 
manufacturer agreeing to allow him to make and sell 
his patented article, in consideration of the latter 
paying a specified sum or'dutyupon each article when 
sold. The manufacturer terms this authority his 
license, and the duty or license-fee is called Koyalty. 

Licenses may be granted with conditions of any 
kind attached, such as the jjayment of a royalty or the 
use of due diligence in carrying on business under the 
patent ; and if such condition is broken by the licensee 
the license may be revoked ; and, if necessary, he 
may be proceeded against like any other infringer. 

A license is not transferable unless it so expressly 
states. If no definite term for the license is named, 
it is revokeable by the maker. 

" Any assignment which does not convey to the as- 
signee the entire and unqualified monopoly which the 
patentee holds in the territory specified is a mere 
license." 

Sanford et al. vs. Messer, 2 0. Gf., 470. 

•' ' The owner of the exclusive right to use and sell a 
patented article within a specified territory, but not 
the right to manufacture, is a licensee, and cannot 
maintain an action for infringing the patent." 

Hill ef al. vs. Whitcomb, 5 0. G., 430. 

Baltimore, Md. 



90 

' ' Where a machine was licensed for use in a par- 
ticular territory : Held, that the use of it, by subse- 
quent purchasers, in territory other than that for which 
it was licensed, was unlawful." 

Wicks vs. Kleinklecht, 7 0. G., 1098. 

" If a licensee avails himself of the invention, and 
the royalty has accrued and is due the patent owner, 
he cannot set up as a defense for non-payment that the 
patent is valid." 

Magic Ruffle Co. vs. Elm City Co., 8 0. G., 773. 

Kinsman vs. Parkhurst, 18 Howard, 289. 

" A license will not carry the right to any one but 
the licensee personally, unless there are express words 
to show an intent to extend the right to an executor, 
administrator or assignee, voluntary, or involuntary." 

Supreme Court of the United States, Oliver, Finnic 
& Co., vs. The Ruraford Chemical Works, decided 
October 39, 1883. 

RECORDING. 

The statute directs that an assignment or grant 
shall be recorded within three months from its date. 

An assignment or grant is good and valid, as 
against the assignor or grantor and all other persons, 
except a subsequent hona-fide purchaser for a valua- 
ble consideration, not having notice or knowledge of 
the prior assignment. * 

If a patentee were to assign his patent to a person 
who did not, within three months, put the same upon 
the Patent Office records, and then the patentee should 
sell the patent to a second purchaser who knew noth- 
ing of the prior assignment, and the second purchaser 
should have his assignment properly recorded, he 
Mann & Co., Patent Attorneys. 



i 



91 

would take a legal title, and the first purchaser would 
have no interest in the patent ; but, if the second pur- 
chaser knew, at the time he took his assignment, of 
the prior assignment, then the second purchaser would 
get no title."* 

A license is not required by the law to be recorded , 
though the interest of the licensee is best subserved 
by putting it on record. 

The assignee, or the owner of a territorial right, 
cannot maintain a suit, for infringement unless his 
deed is on the record. 

' ' An unrecorded assignment will prevail over the 
rights of a subsequent purchaser who takes with 
notice of the prior assignment." 

Ashcroft vs. Walworth, 2 0. G., 546. 

"In determining to whom a patent shall issue, 
where assignments have been made, the Commissioner 
of Patents must be governed by the record." 

T. A. Edison, 7 0. G., 423. 



*The transfer of an interest in a Patent, especially 
where there are conditions or covenants to be perfornied 
by the purchaser, is a matter of importance which 
makes it clearly to the interest of a Patentee to have 
the impartial advice of a competent Patent Attorney. 
The average lawyer, residing in the smaller cities and 
towns knows but little about the intricacies of patent 
law, and therefore may not be competent to advise. 

Patent Owners wanting advice or assistance, can ad- 
dress us, slating particulars, and at the same time remit 
us from $1 to $5, according to the nature or extent of 
services required. 

MANN & CO.. 

PATENT ATTORNEYS, 
No. 116 W. Baltimore St., 

Baltimore, Md. 

Baltimore , Md. 



TRADE MARKS. 



The law of trade-marks is a recognition of the prin- 
ciple that no person has a right to use a name, mark 
or indicia in order to attract for his goods or wares 
patronage that would otherwise have flowed to the 
person who first used or adopted the particular mark. 

At common law a trade-mark is unlimited in time — 
it expires only by disuse. It is not for a particular 
territory — has no boundaries, but is recognized where- 
ever trade and commerce extend. 

The act of July, 1870, provided for a system of 
registry of trade-marks in the Patent Office of the 
United States, and gave to the owners of trade-marks 
so registered, certain remedies, legal and equitable, 
for the unlawful use of the same or similar marks by 
others. The remedies, also, which trade-mark owners 
had before the passage of the act, were saved to them. 

Trade-marks already in use may be registered. 

The statute which provides this system of registry 
did not undertake to create any new law as to the 
nature and essentials of trade-mark property. The 
basis of that property, now, as before the Act, con- 
sists in adoption of the mark appropriated, and by 
"adoption" is meant an actual application of the 
mark, in the course of trade, to the class of goods for 
which it has been selected. Origination of invention 
Mann & Co., Patent Attorneys, 



93 

has nothing whatever to do with the matter ; the 
question of priority in a trade-mark controversy is not 
who first conceives or designed the mark, or first in- 
tended to adopt it, but who first did adopt it, by ap- 
plying it to the particular class of goods. 

The Act authorizes the registry of ' ' lawful ' ' trade- 
marks, that is, of marks having those qualities which 
the law as evidenced in judicial precedents, has re- 
cognized as requisite for a proper trade-mark. It is 
not an easy matter in the space at our disposal to 
state any general rule for determining the requisites 
of a lawful trade-mark ; it must suffice to say the 
mark should be arbitrary, with the only purpose oi in- 
dicating the origin or oivne^^sliip of the goods. 

The benefit of registry extends to the term of thirty 
years, and may be renewed for a further term of thirty 
years. 

" When a person permanently ceases to use his trade- 
mark and consents to its adoption and use by another 
he relinquishes his right to it." 

Kidd & Co. vs. Mills. Johnson & Co., 5 0. G., 337. 

" A word that is merely descriptive, and used in its 
ordinary signification, cannot be registered as a trade- 
mark. ' ' 

Dundas, Dick & Co. , 9 0. G. , 538. 

'■ A person has no right to appropriate exclusively 
a sign or a symbol which, from the nature of the fact 
it is used to signify, others may employ with equal 
truth, and therefore, have an equal right to employ 
for the sam.e purpose." 

Pratt and Farmer, 10 0. G., 866. 

Baltimore, Md. 



94 

" A mark which, although not absohitely identical 
with, is so close in its resemblance to another as to 
readily mislead the public, cannot be registered." 

Coggin, Kidder & Co., 11 0. a., 1109. 

'• What degree of resemblance is necessary to con- 
stitute an infringement is incapable of exact definition 
as applicable to all cases. All that courts of justice 
can do in that regard il to say that no trader can 
adopt a trade-mark so resembling that of another 
trader as that ordinary purchasers buying with ordi- 
nary caution are likely to be misled." 

McLean vs. Fleming, Supreme Ct., 13 0. G., 913. 

"As an abstract right, apart from the article man- 
ufactured, a trade mark cannot be sold, the reason 
being that such transfer would be productive of fraud 
upon the public ; but in connection with the article 
produced it may be bought and sold like other prop- 
erty. ' ' 

Decided February 13, 1884. 

Morgan et al. ?;s.' Rogers, 26 0. G., 1113. 

A decision was rendered by the Supreme Court of 
the United States, November 18, 1879, in the case of 
U. S. vs. Stefeens, 16 0. G., 999, in which it was held 
that the trade-mark statutes of 1870 and 1876, cannot 
be upheld, being unconstitutional. 

On March 3, 1881, a new act of Congress was ap- 
proved, under which Trade-Marks are now registered 
in the Patent Office. 



Sec. 3. That in the construction of this act, the 
words/' Engravings," " cut," and " print " shall be 
applied only to pictorial illustrations or works con- 
nected with the fine arts, and no prints or labels de- 
Mann & Co., Patent Attorneys. 



95 

signed to be used for any other articles of manufac- 
ture shall be entered nndes the copyright law, but 
may be registered in the Patent Office. And the 
Commissioner of Patents is hereby charged with the 
supervision and control of the entry or registry of 
such prints and labels, in conformity with the regula- 
tions provided by law as to copyright of prints, except 
that there shall be paid for recording the title of any 
print or label, not a trade-mark, six dollars, which 
shall cover the expense of furnishing a copy of the 
record, under the seal of the Commissioner of Patents, 
to the party entering the same. (Act of June 18, 
1874). 

By the word •' print," as used in the said act, is 
meant any device, picture, word or words, figure or 
figures, (not a trade-mark), impressed or stamped 
directly upon the articles of manufacture, to denote 
the name of the manufacturer or place of manufac- 
ture, style of goods or other matter. 

By the word " label," as therein used, is meant a 
slip or piece of paper, or other material, to be attached 
in any manner to manufactured articles, or to bottles^ 
boxes, and packages containing them, and bearing an 
inscription, (not a trade-mark), as for example : the 
name of the manufacturer or the place of manufacture, 
the quality of goods, directions for use, etc. 

By the words " article of manufacture " — to which 
such print or label is applicable by said act — is meant 
all vendible commodities produced by hand, machin- 
ery, or art. 

But no such print or label can be registered unless 
it properly belongs to an article of commerce, and be 
as above defined. 

Baltimore, Mci. 



96 

This registration remains effective for twenty-eight 
years, and may be renewed for fourteen years more. 

' ' To effect the valid registry of a print or label 
under the amendatory act in question, a printed copy 
of the title of the article to be thus protected, must be 
deposited at the Patent Office before publication, (be- 
fore use). • 

Marsh et al. vs. Warren, 13 0. G., 7. 



Mann & Co., Patent Atlorueys 



FOREIGN PATENTS. 



Sec. 4887. No person shall be debarred from receiv- 
ing a patent for his in v^ention or discovery, nor shall 
any patent be declared invalid, by reason of its having 
been first patented or caused to be patented in a for- 
eign country, unless the same has been introduced 
into public use in the United States for more than two 
years prior to the application. But every patent 
granted for an invention which has been previously 
patented in a foreign country shall be so limited as to 
expire at the same time with the foreign patent, or, if 
there be more than one, at the same time with the one 
having the shortest term, and in no case shall it be in 
force more than seventeen years. 

When an invention is of such value as to suggest 
the propriety of protecting it abroad, it is advisable 
to mail the papers from this country before the patent 
has issued here, so as to forestall the acts of pirates 
who are in the habit of sending printed copies of val- 
uable patents abroad. 

' ' A Foreign patent granted after the patentee files 
his American application, but before he obtains his 
American patent, does not limit the term of his Amer- 
ican patent." 

17 0. G., Ex-parte Mann, 330. 



Baltimore, Md 



SCHEDULE OF PATENT OFFICE FEES. 



All the fees payable to the Patent Office are positively- 
required by law to be paid in advance: that is, upon 
making application for any a9tion by the Office for 
which a fee is payable. 

The following is the tariff of fees established by law : 
On filing every application for a design patent for 

33^ years $10 00 

Every application for a design patent for 7 years 15 00 
Every application for a design patent for 14 years 30 00 

Every Caveat 10 00 

Every application for a Patent for an invention.. 15 00 
On issuing each original Patent for an invention.. 20 00 

On filing a disclaimer 10 00 

Every application for a re-issue 30 00 

Every application for a division of a re-issue 30 00 

Appeal from a primary examiner to exam.iners- 

in-chief 10 00 

Appeal to the Commissioner from examiners-in- 
chief 20 00 

On depositing a trade-mark for registration 25 00 

On depositing a label for registration 6 00 

For recording an assignment of 300 words or under 1 00 
For recordins: an assignment over 300 words and 

notover 1,000 2 00 



Mann & Co., Patent Attorney's 



ADVERTISEMENT. 

While we would abstain from anything like a boastful 
assumption of superiority, we think we slioukl here 
say for ourselves, that we have the requisite intelli- 
gence, experience and honesty, to qualify us lor render- 
ing first-rate services in any matter connected with 
patents. 

IN PROCURING PATENTS. 

We do not pretend to possess " exceptional " facilities 
at the Patent Office. We do not say we can get patents 
allowed with broader claims, or in a shorter time than 
other honest and competent Attorneys; but we do say 
that we faithfvilly apply our utmost capacity and dili- 
gence in the interest of our clients. We do not delegate to 
clerks ihat part of the labor in preparing and prosecu- 
ting an application for a patent, which calls for the ex- 
ercise of experience and brains ; and, furthermore, our 
inethods have met with conspicuous success. The bus- 
iness at the Patent Office is transacted by Chas. B. 
Mann, in person,— either by personal interviews with 
the Officials or by written briefs, or both. We have been 
able in past years to do this in a way to command the 
respect of the Patent Office, and to gain the confidence 
of hundreds of inventors, and our business in conse- 
quence has steadily increased. We can assure inven- 
tors, therefore, that they may expect of us faithful ser- 
vice and candor in our treatment of their business. We 
will at any time cheerfully inform persons who do bus- 
iness with us, of the progi'ess of their applications in 
the Patent Office. 

For a statement of our fees and how they are paj'able, 
see under heading " application," page— 

MANN & CO., 

PATENT ATTORNEYS, 
' No. 116 W. Baltimore St., 

Baltimore, Md. 



Baltimore, Md, 



APPENDIX. 

INFORMATION 

FOR INVENTORS WHO DESIRE 

To Obtain Patents. 



HOW TO OBTAIN PATENTS. 



The Patent OfEce does not prepare Patent papers, 
amend imperfect ones, or make models for inventors; 
those duties must be done by the inventor or his au- 
thorized agent. Very few inventors are competent to 
prepare the d awings and legal documents required by 
the Patent Office; and even if some possess sufficient 
knowledge and abilitj^ to do so, .it is hardly i^ossible for 
them to meet and successfully surmount the numerous 
difficulties which often obstruct the application for a 
Patent. Hence it is advisable for inventors to submit 
their plans to the inspection of experienced men. who 
make the solicitation of Patents their jDrofession. 

All who have made inventions and desire to consult 
with us in regard to obtaining Patents are cordially in- 
vited to do so free of charge. In all cases they may ex- 
pect from us a careful consideration of their plans and a 
prompt reply. 

All business, and especiaUy all correspondence regarding 
a new invention, is held hy us strictly secret and confidential. 

WHAT MAY BE PATENTED. 

New and useful -processes, machines acid articles o^ 
manufacture are patentable ; and new and useful mix- 
tures or compositions, medicines, chemical preparations, 
or new substances useful in any of the industrial arts are 
patentable. 

When the invention relates to the latter class, sam- 
ples should be furnislied, and a full statement of the In- 
gredients or component parts, with the exact proportion 
of each, and the method of compounding or applying 
the same should be sent us. 

Sometimes it is not necessary to disclose to the Patent 
Office all the ingredients and proportions, and whenever 
a valid patent can be obtained without fully specifying 
this part, we will make it a point to do so. 

OUR OPINIOK AS TO PATENTABILITY, 

A pen-and-ink sketch and a description of the inven- 
tion should be sent. We will immediately answer and 

Baltimore, Md. 



104 

inform you whether or not your improvement is proba- 
bly patentable. If we are satisfied that the invention (.s 
patentable, eitlier wholly or partly, we give the infor- 
mation necessary to apply for a Patent, or file a Caveat. 
If we find that it is 7iot new, we so advise our corre- 
spondent, who without expense, is thiTS saved further 
trouble. For such consultation and opinion no charge 
is made. 

PREIAMINART EXAMINATION. 

It is often advisable to have an examination made in 
the Patent Office to find if the invention improbably new 
and patentable. Such an examination we make, in- 
cluding the dra#ring of the class to which the invention 
belongs. Tliis is not a warranted searcli [though we 
make such for a proper fee] but is a better one than the 
average inventor could make if personally present in 
the Patent Office; the chances are at least ninety-nine 
in one hundred that a Patent can be had if our report is 
favorable, but we assume no responsibility on this point, be- 
cause the Government Examiners sometimes malce er- 
roneous decisions, or a patented invention for a similar 
iiurpose is found which partly resembles that of the ap- 
plicant. 

We write the result of our examination, and send 
sketches of the nearest Patents of a similar character 
that we are able to find, for whicn our cliarge will be %ii\ 
and Ave will deduct this sum from the amount of our fee 
for making the application for a Patent on said inven- 
tion, if a Patent is subsequently applied for. 

CAVEATS— A TEMPORARY PROTECTION. 

When au Inventor is not ready to at once make appli- 
catioh for -x Patent, and wants further time to mature 
or test his invention, he may obtain immediate protec- 
tion by filing a Caveat, which consists of a petition, 
oath, specification of invention and drawings. No 
model required. The filing of a Caveat prevents, during 
its existence, the issue of a Patent, without tlie know- 
ledge of the Caveator, to any other person for a similar 
device. Should a competitor apply for a Patent the 
Caveator is notified, and called upon to file his applica- 
tion for a Patent within three months from date of 
notice. 

A Caveator is entitled to notice if any application be 
made for Letters Patent for a like invention, at any time 
within a year from the date at which his Caveat is filed. 
He is not, however, entitled to notice of any pending 

Mann & Co., Patent Attorneys. 



105 

application "wliicb may liave been filed before the filing 
of his Caveat, nor of any application which may be filed 
after the expiration of' one year from the filing of his 
Caveat, unless the latter shall have been renewed for 
aiKJther year by the payment of a second Caveat fee. A 
Caveat may be thus renewed from year to year by the 
annual payment of a Caveat fee. No portion of the 
money paid for a Caveat applies toward the Patent. 

No one can see or obtain a copy of a Caveat without 
the order of the Caveator. The filing of a Caveat does not 
prevent others from making, using or selling the inven- 
tion. 

An application for a Patent may be made at any time 
after filing Caveat, without regard to the term or life 
of the latter. An inventor need not wait until the 
Caveat expires. 

On filing a Caveat the Patent Oflice issues an ofilcial 
certificate, which is forwaided to the applicant. The 
total cost of a Caveat ordinarily is $20. 

If you wish to enter a Caveat, send us a plain pencil 
sketch, with a description of your invention, and $10 on 
account of fees, and we will at once send you all the ne- 
cessary papers, with instructions how to sign, etc. 

MODELS. 

The Patent Oflice rule respecting models is now as 
follows : 

" A model will not be required or admitted as a part 
of the application until, on examination of the case in 
its regular order, the primary examiner shall find it to 
i)e necessary or useful, and shall file a written certifi- 
cate to that effect.' ' 

When models are furnished for the Patent Office they 
must be neatly and substantially made of hard wood or 
metal— if of p'ine wood, they must be painted or var- 
nished ; they should not exceed one foot in any of their 
dimensions; and must have the inventor-s name painted, 
engraved, or otherwise affixed thereon m a conspicuous 
and durable manner. 

Where the invention consists of an improvement on 
some known machine, the model only need show the 
working of the improved parts. A representation of the 
whole machine in the model in such case will not be 
necessary. 

When a model is filed it constitutes a very imiD|)rtant 
feature in the application, and is worthy of more atten- 
tion than is usually bestowed upon it, for the following 
reason : 

It is a strict rule of the Patent Office that no ckiim can 

Baltimore, Md. 



106 

be made upon any device, or part thereof, not shown in 
the model exactly as claimed. 

If the model or sample be small and light, it maj' be 
sent to us through the mail. The package should con- 
tain no writing, and must not be sealed in any ivay, oilly 
tied with a string. Generally, however, models should 
be carefully boxed and forwarded to us by express, 
charges x>Tepaid. 

A fall written description should also be sent with the 
model, embodj^ng all the ideas of the inventor respecting 
the operation and merits of the improvement. This state- 
ment is of great assistance to us in preparing the speci- 
fication. 

Address models, Manx & Co., 

No. 116 W. Baltimore Street, Baltimore, Md. 

Upon sending us the model or drawing, if 3-oa desire 
us to at once proceed with the application, remit $5 on 
account of fees, and we will take the case in hand im- 
inediatelj\ 

DRAWINGS. 

The applicant for a Patent is required by law to fur- 
nish drawings where the nature of the case admits of 
them. The drawings must be neatly and artistically ex- 
ecuted, according to certain rules prescribed by the Pat- 
ent Office. Perfect clearness and perspicuity in the 
drawings are essential to a proper understanding of the 
specification by the office. 

There is no part of the application concerning which 
the Patent Office is so exactingas it is to the quality of the 
drawings, none but a skilled draughtsman can make 
them of the required standard. 

The cost of drawings are included in the charges here- 
in named for patent, but if complex and more than one 
sheet is necessary, the extra sheets may cost $5.0U each. 

APPJLICATION. 

As soon as we receive the model or a drawing,and de- 
scription, we proceed immediately to prepare the ne- 
cessary papers, and when we have them properly pre- 
paredfwe send them to you for your examination and 
signature. 

If you find them satisfactory, you sign them at the 
places indicated by pencil marks— your Christian name 
being written in full— execute the oath before a notary 



Mann & Co., Patent Attorneys 



Jl 



107 

public or justice of tlie peace— tlae oath must be authen- 
ticated by an official seal— then return the papers to us 
by Mail or Express, with fees, upon receipt of which the 
papers are filed in the Patent Office. 

The application comprises drawings, petition, oath, 
specification, and the first Government fee of §15; all to 
be filed at the same time. 

Upon presenting an application to the Patent Office, it 
is referred to the primary Examiner, who examines it 
with reference to its noveitj' and usefulness. If he finds 
the invention unlike all other devices known or de- 
seritaed; or an improvement upon one, and that it is not 
liurtful, a patent is allowed. 

If, on the contrary, any model, drawing, specification, 
or published description of the same thing be found, the 
application is rejected. 

If the Examiner should for any reason, object to the 
allowance of all that is claimed, we endeavor to over- 
come his objections by obtaining a re-hearing and ex- 
plaining away the points he raises, or amending the 
specification so as to avoid his objections. 

If the examiner, after argument, holds that the claim 
is too broad, the objectionable portion can be stricken 
out from the claim without altering the drawing, the 
Patent will then issue and secure to the inventor all 
that is patentable. 

"When an application is allowed, we forward to appli- 
cant the otficial letter of aVovxmce, and the final fee of $20 
is then diie the Government. The Patent will issue on 
the thii'd Tuesday after this fee is paid. 

ATTORNEY'S FEES. 

As already stated, the Government fees are: first S15; 
second, ^2ii; total, $35. Besides these, there is the Attor- 
ney's fee for preparing papers, making drawings and 
prosecuting the case while it is under consideration by 
the Commissioner. The Attorney's fee to covei' all this 
service, in an ordinary case, is $2^5. This sum added to 
the total Government fees ($35) makes the usual cost of 
a Patent ¥60. 

There are two plans of paying Attorney's fees, and we 
accept applications on either ulan. The first plan is to 
pay the full Attorney's fee, $25, at the same time of pay- 
ing the first, f 15; Government fee, making total $40. The 
second plan is to pay the Attorney §5 only, at time of 
paying the first $15 Government fee, thus making the 
cost by this plan to apply for Patent only S20, and when 
the Patent Office issues the "'notice of allowance," then 
the Attorney is paid the balance of his fee, $20. By the 

Baltimore, Md. 



lOS 

first plan, all the Attorney's fee is paid in advance of 
allowance of Patent; by the second plan, twenty dollars 
of the Attorney's fee is made contingent on the aUoivance 
of Patent— fhsit is, $20 is payable only after 'notice of al- 
lowance" of Patent issnes. If no such notice issues 
then no further fee becomes due the Attorney. » 

To explain and discuss the relative merits and disad- 
vantages of these two plans of paying the fees of Patent 
Solicitors would require more space than can be spared 
in this book. Suffice it to say, Ave leave the matter op- 
tional with each applicant. We will undertake applj- 
cations for Patents on cither of the above plans of paying 
the Attorney's fee. 

TIME REQUIRED. 

We can generally obtain the allowance of a Patent in 
four weeks after filing application; we may, and fre- 
quently do get them allowed in two weeks, and in other 
cases it may consume several months time. In regard 
to this variation as to time required to obtain a patent, 
much misunderstanding exists. 

One inventor may find his case acted on in three or 
four days after the filing of his application, while his 
neighbor may become dissatisfied because he has to 
wait as many weeks and sometimes months for an ac- 
tion. The reason of this is simply because the two ap- 
plications are for inventions appertaining to difierent 
classes, in charge of different Examiners, one of whom 
may, owing to a press of business, be behind-hand with 
his work. 

An application maybe rejected upon reference to some 
prior Patent, and the Examiner may hold the opinion 
that the invention is fully anticipated. It must be borne 
in mind that it is the Examiner's duty to refuse to issue 
a Pater t for anything Avhich is already the property of 
a prior patentee or of the public; an Examiner is enti- 
tled to his opinion, and the best Avayto overcome his 
adverse decision is to study the bearings of the referen- 
ces cited, and prepare a careful argument endeavoring 
to conA'inee him that he lias erred in judgment. This 
course unavoidably cousume-s time but often saves a pat- 
ent and the expense of an appeal. 

PAYING FINAL FEES. 

It Is advisable, after a "notice of allowance " has been 
issued, to pay the final fee promptly. Ail deiay in pay- 
ing this fee is at the inventor's risk. All pending applica- 

Mann & Co., Patent Attorneys. 



109 

tions for patents are under the control of the Commis- 
sioner, until the letters patent therefor is actually 
signed, sealed, and delivered. An application is still 
pe7xding Rlthongli the "notice of allowance" has been 
issued. 

When " notice of allowance " is issued the law says to 
an Inventor in substance, as follows : " if you choose to 
delay paying the final Government fee, 52*0. you can do 
so for a period not .onger than six months, but every 
day's delay is at your risk." The " notice of allowance " 
is no guarantee that the patent ^vUl be issued to you 
whenever you pay the fee, if you pay it within six 
months. The notice means simply this: "at this date 
you are entitled to a patent. If you pay the final fees 
won", the patent will at once be prepared for delivery, 
and as soon as it can be printed, sig-ned and sealed it 
will be delivered to you; but if you avail yourself of any 
part of the six months which the law allows, you assume 
all responsibiUfy for any consequence which may result 
from such delay." 

Now the possible consequences resulting from delay 
to promptly pay the final fees are as follOAVs ; 

First. By defaying to issue the patent, the application 
of some other inventor to accomplish a similar result, 
by some other means, may issue before yours, and thus 
you lose the advantage of having the earlier date. 

Second, By delaying to issue the patent another ap- 
plication from an independe» t inventor for a similar 
thing may be filed, and in such event your "notice of al- 
lowance ■' would be withdrawn, and an " interference ' ' 
would be declared, and you would be put to the expense 
and subjected to the harassment of mind involved in 
taking testimony to prove your^e]f t\-\e first inventor. If 
yoii are not proven to be the first inventor you will lose 
the patent. 

TJiirO. By delaying to issue the patent, difiiculty and 
litigation may arise by others constructing the machine 
before the patent issues; and it has been lield under 
Section -1SP9, that when this was done under the belief 
that it was authorized, and that the inventor allowed 
it, such machine might continue to be used after the 
date of the letters patent. 

It is dangerous to delay paying the final fee. 



When an inventor has had his application for a Pat- 
ent a second time rejected by the Examiner having 
charge of that class of inventions to which the machine 

Baltimore, Md. 



110 

or process belongs, the law permits an appeal ; three ap- 
peals aie allowed, viz ; 

First Appeal.— From, primary Examiner to the Board 
of Examiners-in-Chief. Government fee, $10. 

Second A2)2)eal.— From the decision of the Examiners- 
in-Chief to the Commissioner of Patents. Government 
fee, $20. 

Thh'd Ajjjieal—Fi'om. the decision of the Commissioner 
of Patents to the Supreme Court of the District of Col- 
umbia. Docket fee $10, and other expenses. 

A decision favorable to the applicant rendered by 
either one of these tribunals, is final. 

In case, however, of our being able to obtain the re- 
versal of an unfavorable decision of the Examiner by re- 
questing a reconsideration without making an appeal, 
we will always do so free of any further charges beyond 
that originally agreed on by us for prosecuting the ap- 
plication ; but in case of an appeal from the Examiner be- 
ing necessary, we Avill require a moderate fee, propor- 
tionate to the extra labor. This fee will be arranged by 
agreement l>efore the appeal is taken. 

INTERFERENCES. 

'• Are proceedings instituted for the purpose of deter- 
mining the question of priority Of invention between 
two or more parties claiming the same patentable in- 
vention." 

An interference will be declared in the following 
cases ; 

First. When two or more parties have apphcations 
before the office at the same time, and their respective 
claims conflict in whole or in part. 

Second. When two or more applications are pending 
at the same time, in eacli of which a like patentable in- 
vention is shown or described, and claimed in one, 
though not specitically claimed in all of them. 

Third. When an applicant having been rejected upon 
an unexpired patent, claims to have made the invention 
before the patentee. 

The fact that one of the parties has already ol^tained a 
Patent will not prevent an interference; for, although the 
Commissioner has no power to cancel a patent already 
issued, he may, if he finds that another person was the 
prior inventor, give him also a Patent, and thus place 
them on an equal footing before the courts and the 
public. 

Upon the declaration of an interference, each party 
will be required, liefore any time is set for the taking of 
testimony, to file a preliminary statement under oath, 

Mann & Co., Patent Attorneys. 



Ill 

giving tlie date, and a detailed history of ttie invention; 
sliowiug the successive experiments, steps of develoj)- 
ment. extent and character of use, and forms of embod- 
iment. 

The rules regarding the conduct of interference cases, 
are of such a character that they cannot be prosecuted 
without the expenditure of time and money. A timely 
and candid conference between the contestants, or be- 
tween their counsel, may sometimes obviate the neces- 
sity of litigation. 

Our charges for attention to interferences are nioder- 
ote, and^dependent upon the time required. 

RE-ISSUE OF DEFECTIVE PATENTS. 

Patentees frequently find it desirable to make amend- 
ments in the specifications upon which their letters- 
patent were originally granted, and to obtain stronger 
chums. To effect this the original patent must l)e re- 
turned to the Patent Office with an amended specifica- 
tion, accompanied by a proper petition and oath, a Oov- 
erninent fee of ^3), and SI. 50 for a certified abstract of 
title, and a carefully prepared statement of the particu- 
lars in which the original specification was defective, 
and in what manner^the defect arose. Many restric- 
tions are now imposed on the re-issue of Patents. As the 
amended specification and claims are suVyected to a 
very searching examination, it is very necessary that 
they he prepared in tlie luost skillful manner. For a 
moderate fee, applications for re-issue are prepared by 
us in sucli a way as best subserves the Interest of pat- 
entees. 

Where a re-is5ue is granted, the applicant may, in a 
suitable case, at his option, have separate patents issued 
for the several distinct parts of the thing originally 
patented, by paying the requisite additional Govern- 
ment fees, namely Sod on each. 'J'liis division of the 
Patent will also involve additional expense in the pre- 
paration of the application. 

PATENTS FOR DESIGNS. 

It should be V^orne in mind, that design patents are 
not granted for mechanical inventions, but onljtj for the 
design or configuration of articles where this design or 
configuration is intended as an ornament. Among the 
numerous subjects for Patents of this class may be par- 
ticularly mentioned— castings of all metals, parts of 






Baltimore, Md. 



112 



machines, household furniture and utensils, glassware, 
hardware of all kinds, cornices, and other inferior and 
exterior decorations of buildings; also, designs for 
woven and printed fabrics; dress and upholstery trim- 
mings, and harness. Also the form ofbottles, boxes or 
packages to contain perfumery or medicinal prepara- 
tions ; likewise all works of art, as statuary, V)usts, com- 
positions in alto or basso-relievo. The Government tee 
on a design patent for 'dH years is $10 ; for 7 years, $io ; H 
years, $30. No models of designs are required; but du- 
plicate drawings or photographs must be furnished. The 
specification to accompany the drawings or photograpiis 
require to be prepared with great care. Our charge for 
preparing and prosecuting applications for design pat- 
ents is $15. 

TRADE-MARKS. 

The registration of Trade-marks remain in force for 
thirty years, and in certain cases can be extended for 
thirty years m<:)re, 

A trade-mark is designed for application to goods, 
wares and merchandise, to designate the person, firm or 
corporation dealing in or manufacturing the same. 

No proposed trade-mark will be received or recorded 
which is not or cannot become a lawful trade -mark, or 
which is identical with a trade-mark appropriate to the 
same class of merchandise, and belonging to a different 
owner, and alrea^.'y registered or received for registra- 
tion, or which so nearly resembles the last-mentioned 
trade-mark as to be likely to deceive the public. 

In order to obtain trade-mark protection, we require— 

1. The name of the party or- firm, (and if a firm, the 
names of the parties;, their residences, and places of 
business. 

2. The class of merchandise, and the particular de- 
scription of the goods comprised in such class, by Avhich 
the trade-mark has been or is intended to be appropria- 
ted. 

3. A description of the trade-mark itself, with ten 
fac-slmiles thereof, and the mode in Avhich it has been 
applied. 

4. The length of time, during which the trade-mark 
has been in use. 

5. The necessary funds, including the Government 
fee, $2i, our own fee, $15. Total ^4U. 

The riiiijt to the use of any trade-mark is assignable 
by an insti umetJt of writiug, and such assignment must 
be recorded in the Patent Office within sixty days after 
its executi(.n. 

Mann & Co., Patent Attorneys. 



113 



PATENTS FOR LABELS AND PRINTS. 

Trior to the year 1S74, labels could be secured under 
the copyright law; but in that year the law Avas changed. 

Labels and prints of all .kinds for bottles, boxes and 
packages, for medicines, compounds, and every descrip- 
tion of inercliandise. may now be patented Vjy registm- 
tion in liie Patent Office. 

The Patent or registration so obtained, lasts for twenty- 
eight years, and may be ttien renewed for an additional 
period of fourteen years. It secures to the proprietor 
the exclusive right to use the registered label or print 
during the period named, and all persons wlio imitate 
the same will be liable to damages as infringers. 

In order to obtain such registration, the applicant 
should give liis full name, or the name of the firm and 
its members, and six copies of tlie label or print, with 
the fees, SliJ, wliich cover all expenses. We then pre- 
pare the necessary papers which applicant must sign, 
and when duly registered we forward the offlcial certifi- 
cate to the applicant. 

COPYRIGHT. 

A copyright can be obtained by any person or persons 
being a citizen or citizens of tlie United States, or resi- 
dent therein, being the author or authors of any book, 
map, chart, or musical composition, or who shall invent, 
design, etch, engrave, work, or cause to be engraved, 
etched, or workea from his own design, any print or en- 
graving, and also by the executor, administrators, or 
assignees of such person or persons. 

The tenn of the copyright is twenty-eight years from 
the time of recording tlie same. 

Copyrights may be assigned ; the assignment must be 
recorded by the Librarian of Congress. 

Infringers of copyrights are subject to heavy fines and 
'penalties. 

Our charges for procuring a copyright are $5, includ- 
ing Government fee. 

Labels can no longer be copyrighted; such matter 
must now go to the Patent Office. 

REJECTED CASES. 

An application for a patent is very frequently re- 
jected by the Patent Office, which, by proper manage- 
ment, Avould have been allowed and a Patent obtained. 
Some inventors prefer to prepare and prosecute their 
own applications, without tlie aid of experienced coun- 



Baltimore, Md. 



sel; and when their application is informal, or is met 
by a reference to a prior Patent their application is re- 
jected, a Patent is refused, unci that is the end of it. 
Again, there are many so-called " patent lawyers " who 
undertake to obtain Patents for inventors, without be- 
ing properly represented in the Patent OfRce in Wash- 
ington. If a Patent is refused upon a reference which 
could be overcome by an amendment or disclaimer, or 
by an argument, they have not the facilities for exam- 
ining, in the Patent Office, the reference cited by the 
examiner, nor for making the required alterations or 
arguments ; and the result is, that they have to inform 
their client that his case has been " rejected." Xow, we 
offer to examine, free of charge, all such rejected appli- 
cations; and if, after a careful examination, we find 
that a patent may be obtained, we so inform our client, 
agree upon a fee, contingent upon success, and reopen 
the case. Asa cai?e which has been rejected and which 
then passes into the hands of an attorney is more diffi- 
cult to prosecute and argue than a case that was 
carefully prepared in the first instance, our fee for 
the successful prosecution of a rejected application is 
graded according to the difficulties of the case and the 
amount of labor necessary to the achievement of a suc- 
cessful result. 

As our fees in these cases are conditional entirely upon 
our success in obtaining the allowance, it is clear ^hat- 
it involves the inventor in no e:q:>ense whatever should 
we fail in convincing the Office of the justice of his- 
claim. 

In order to examine your rejected case w^e must have; 
a power of attorney • copy the following form in pen and 
ink and send to us. 

Form for Power of Attorney. 

To the Comnms'oiier of Patents : 

The xindersigned, having on or about the day of ,. 

18 , made application for Letters -Patent for an improve- 
ment in , hereby revokes all former Poivcra of Attorney^ 

and appoints Charles B. Mann, (of the firm of Ma an. & Co.,) 
Baltimore, Md., his attorney, with full poivcr of substitution 
and revocation to prosecute said application, to make altera' 
tions and amendments therein, to receive the Patent, and to- 
transact all busiJiess in the Patent Office connected therewith. 

Signed at State of , this day of J86— . 

(Signature in full here.) • 

Witness : 



Mann & Co., Patent Attornf vs. 



115 



Down to November 29tli, 1881, It was the practice in 
the Patent Office to treat all applications which had 
been "allowed," and on which the final fee had not 
been paid, and no renewed application had been made, 
as forfeited. 

In all such cases, as far as the applicant was con- 
cerned, the invention was regarded as dead. On the date 
named, a case was decided by the Commissioner of Pat- 
ents which changed tliis practice, and now Patents may 
be obtained by filing a new application, no matter how 
much time has elapsed since a former application was 
" allowed." 

We will undertake to procure patents in such cases. 

EXTENSIONS. 

I^atents issued prior to March 2d, 1861, were granted 
for fourteen years, and the Commissioner could extend 
such Patents for seven years. The original terna of 
such Patents having expired March 2, 1875, there will be 
no more extensions, except allowed by special act of Con- 
gress. 

CANADA PATENTS. 

The close proximity of Canada, with its large and 
rapidly growing population, makes Patents obtained 
there of special value. 

Canada Patents are granted either for 5, 10 or 15 years, 
as the inventor desires. 

5-vear Patent, total Gov. fee,$20 ; Att's fee, $20— Total, ?40. 
lO-Vear " " " "40 " " 2 J— " 60- 

15-year " " " " 60 " " 20— " 80. 

A five or ten-year Patent can readily be extended to 
the full term of fifteen years. 

The proceeding to obtain a Canada Patent is about the 
same as for U. S. Patents— the law being very similar. 

Applicants must give full christian name (middle name 
if any, included), and state occupation. We do our busi- 
ness direct with the Canada Patent Office at Ottawa, 
Canada. Send model, charges prepaid, with full de- 
scription, to 

Mann & Co., Patent Attorneys, 

BALTIMORE, MD. 
FOREIGN PATENTS. 

The patent systems of the various countries of Europe 
diflTer in so many essential respects, not only from that 

Baltimore, Md. 



■of the United States, but from each other, that although 
the applications for patents in those countries must be 
conducted by attorneys or solicitors in their respective 
■capitals, it is necessary for all Americans intending to 
apply for European patent to first secure the advice and 
aid of thoroughly competent agents in this country, 
that their applications may be pvit in proper condition 
for transmission. 

GREAT BEITAIK. 

The British Patent covers the United Kingdom of 
Great Britain and Ireland, but none of the colonies; 
oacli colony making and administering its own patent 
laws. The Patent is always granted for fourteen years. 

On the first of January, 1884, the expense of procuring 
British Patents was greatly reduced l^y law, and now 
the average cost of obtaining a British Patent is $100, 
of which $50 only is required in advance : the balance 
($5!)) being payable in three and a half months. 

In France the term is fifteen years, and the expense 
of obtaining, $9). 

In Belgh'm the term is twenty years, and the ex- 
pense of obtaining. $90. 

In Geriuany the term is fifteen years, and the ex- 
pense of obtaining $100. 

These patents give the inventor a monopoly of his 
discovery among the people of the leading manufactur- 
ing- nations of the world. 

DEATH OF THE INVENTOR. 

In case of the death of the inventor, before applying 
for a Patent, the application may be made by, and the 
Patent when granted, will issue to his legal representa- 
tive. 

JOINT PATENTS. 

Joint inventors are entitled to a joint patent; but 
neither inventor can claim a Patent separately 

INFRINGEMENT SEARCHES. 

The question as to whether a device made according 
to one Patent infringes another lies at the basis of 
nearly all patent litigation, and its phases are as varied 
as the patents themselves. Each case rests upon its own 

Mann & Co., Patent Attorneys. 



117 

peculiarities. The scope of any Patent is governed by 
the inventions of prior date, and the question if an in- 
fringement exists can only be determined by a careful 
study of analogous prior patents. An opinion based 
upon such search and study, requires therefore, for its 
preparation, much time and labor. 

Having access to all the original patents, models, 
drawings, public records, and all other accessible docu- 
ments pertaining to the Patent Office, we are prepared 
to make examinations and give written and carefully 
prepared opinions upon all infringement questions, to- 
gether with a description and digest of other patents 
having a bearing upon the case, upon moderate terms. 

VAEIOUS ITEMS. 

Having daily access to the library, record, models, 
etc., of the Patent Office, we possess every facility for 
obtaining any kind of information concerning Inven- 
tions, patents, rejected applications, or business of any 
kind pending before the office. 

Copies of Patents furnished at Patent Office prices, 
any patent since January 1st, 1866, 25 cents. 

Patent Office Record of Transfers examined to deter- 
mine the validity of title of any patent for $2. 

Special advice or opinion on any question of patent 
law, or any business matter relating to patents, from 
$1 to $5, according to nature and extent of inquiry. 

SPECIAL INFORMATION. 

We are prepared to assist persons in pursuit of infor- 
mation on any special subject relating to engineering, 
mechanical or scientific matters. We have access to 
the splendid libraiy and records of the Patent Office, 
and besides this we have in our own private library 
many of the latest and best works on applied mechanics, 
the industrial arts and manufactures, and also have 
direct and ready access to the famous library of the 
Peabody Institute in this city. This Institute has an 
endowment of several million dollars, and is one. of 
■• the most complete reference libraries for scientific sub- 
jects in the world. We possess, therefore, superior fa- 
cilities for obtaining any kind of informatioa concern- 
ing inventions, or the " state of the art " in any class of 
manufacture. 

We will endeavor to procure any desired information. 
and in some cases, we can furnish printed articles bear- 
ing on the very subject inquired about. Thus we are 

Baltimore, Md. 



118 

frequently able to afford to inventors great assistance 
in perfecting their plans. Our charge for such services, 
ordinarily, is from $1 to |5 ; but may be more where ex 
tended research is necessary. 

MANNER OF TRANSACTING PATENT OFFICE BUSINESS. 

We transact our business chiefly by personal Inter- 
views with the officials of the Patent Offlee; we have 
every facility that is afforded to any one for the conduct 
of our cases. We can and do make personal expla- 
nations and argue the cases of our clients in a man- 
ner much more effective than is possible where the bus- 
iness is transacted wholly by correspondence, or by an 
associate attorney who knows but little about the 
case, as must be done by solicitors who reside at a dis- 
tance from Washington. 

"DELAYS ARE DANGEROUS." 

Many an inventor regrets his delay in applying for a 
Patent. Among so many persons engaged in invent- 
ing, there is certainly always a risk that some one may 
perfect an invention already begun by another inven- 
tor, and apply for and obtain a Patent. The only safe 
course after making an invention is to apply for a Patent 
or file a Caveat at once. 

WE SELL BLANKS FOR PATENT OWNERS. 

We publish and keep on hand all the various kinds of 
blanks needed by Patentees, such as Deeds, Shop-Rights, 
Contract with Manufacturers for Royalty, etc., which 
are all handsomely printed on best quality law-cap 
paper. These ready -printed blanks we sell by the dozen 
or in any quantity. 



Mann & T/O., Patent Attorneys. 



INDEX. 



Abandoned applications, how to revive 85 

invention can not prejudice a patent 87 

Abandonment of application , 35 

a new ru] e 37 

invention 37 

after application 35 

before application 37 

delay after secret experiment regarded as 30 

Abolished patents, the only country that has 16 

Absurd laws of some States - 82 

A comparison : 13 

Accrued damages may be transfei'red 60 

Adapting old machine to serve new purpose is patent- 
able ..:. 28 

Advantages derived by infringer must be accounted 

for 75 

Additional functions 66 

Administrator may apply for and obtain patent 41 

holds patent in trust for heirs 42 

acquires no authority by State laws . . 42 
must be governed by U. S. patent law 42 
may sue for infringement anywhere... 42 

A good precaution 31 

Aid, decision of Supreme Court on skilled 38 

An inventor's rights 9 

Analogy between undivided interests in patent and 

common right of way 77 

Another precaution 32 

Annuled, an instance of patent being forcibly 55 

by scire facias, a patent can not be 56 

Annuling patents 55 

a patent, proceedings for 57 

A patent is a contract 11 

Appeals 109 

Appearances the real essence of design patents 43 

Appendix 101 

Application for patents 106 

may be defeated by printed publication 29 

forfeited may be revived 36 

for re-issue after a judgment is rendered 49- 
Applying for patent, public use before SA 

Mann & Co., Patent Attorneys. 



121 

Article of United States Constitution , . 9 

Ari'angement, patentee not confined to the precise., . . 66 

Article when patent law ceases to protect the .53 

may be used anywhere by purchaser 53, 87 

one authorized to sell gives absolute title to... 54 

is subject to State taxation 54 

may be treated by purchaser same as other 

property 54 

owner of right to use and sell, can not sue for 

infringement of patent 89 

use of may be restricted — 53 

Articles made before the patent issues 51 

patented not exempt from taxation 54, 85 

Assigned, before inventions are patented they may 

be 86 

Assignee holds title until forfeiture is enforced 87 

Assignment, what is an He 

all the right must pass to constitute 

an .86, 89 

may be made before or after patent is- 
sues 86 

by a judge under State law is ineffec- 
tual 58 

court may require patentee to make an. 59 
debtor patentee may be compelled to 

make an ,. 57 

when an unrecorded will prevail over 

^ subsequent purchaser 91 

of an interest a good consideration 62 

Assignments 91 

of patent rights 86 

to be recorded within three months — 90 

effect of not recording 90 

Attorney's fees 107 

Bankruptcy, invention made after an adjudication 

In 59 

Before patent issues assignments may be made 86 

Benefits that are accruing 15 

Blanks for patent owners 118 

Books as a source of information, may be availed of, 38 
Burden of proof 66 

Can a patent be attached for debt 57 

Canada patents 115 

Capital, patents invite 19 

Caveats 104 

Change of material merely is not invention — 28 

Changed, ought the law to be 18 

Changes in a machine may be patented 28 

Baltimore, Md. 



122 

Circuit Courts of U. S. have jurisdiction of all suits . . 70 

Claim is the vital part of a patent 56 

if too broad may be remedied by re-issue 48 

modified by disclaimer — 50 
question of infringement determined by the. . . 65 

to be construed by the state of art 66 

to a process sustained 67 

Colorable evasion is an equivalent - 46 

when only they infringe 65 

Combination in invention.. 44 

what is not a patentable 44 

valid though all the parts are old 44 

what proves Invalid a patent for a 44 

the parts must co-act 45 

court decisions on 45 

when there is no infringement of 67, 68 

one Is liable for infringement of. 46 
Commissioner governed by record in issuing patents. 91 

Compensation for use of patent by Government 55 

Complainant, the burden of proof on 66 

Complaints against the law 12 

Compositions of matter 22 

Conception of invention 24 

Condition to insert in a deed of right 8N 

Congress only has power to regulate the sale ; 81 

Construe patents, the true way to 67 

Consideration, an invalid patent not a good 61 

assignment of ari interest is a suffi- 
cient 62 

Go-owners, the relation of co-partner does not neces- 
sarily follow between 76 

explanation of the rights of 77 

Copies of letters patent under seal 20 

patent office records may be had 20 

Copyright. 113 

Costs do not include counsel fees ^ 74 

Contesting parties, how their rights are decided 27 

Contract, State court has jurisdiction when suit is on. 71 
Court may require patentee to make an assignment.. 58 

may sell debtors patent 57 

has discretion to increase amount of damages. 75 
will refuse to enjoin infringer for u.nreasonable 

delay of claimant 73 

Counsel fees not included in the costs 74 

Creditors, an intanj^ible right like a patent can not 
be seized by 57 

Damages 74 

a clause in deed may transfer accrued . 60 
two ways to recover 6S 

Mann A Co., Patent Attorneys. 



123 

Damages, court has discretion to increase the amount 

of 75 

at law plaintiff must establish the amount. 74 
in equity the master-in-chancerj- deter- 
mines the 74 

are what plaintiff has lost 75 

Date of an invention, how to establish the 32 

Death of the inventor lltj 

Debt, a patent can not be sold on execution for a ... . 57 
invention made after adjudication in Bank- 
ruptcy not liable for old 59 

Debtor patentee may be compelled to make an as- 
signment 57 

Deciding the rights of contesting parties 27 

Decision of Supreme Court on skilled aid 3S 

Employees' rights — 89 

Design Patents 42 

Trade Mai ks 98 

Patent office as to inventions made by 

employees 40 

as to invalidity of state laws 82 

notes given for a Patent Right S3, 84 

purchasers right to use article S8 

Deceiving the public by falsely marking articles 52 

Decree patents invalid, where the power resides T( . . 56 

Declaring Patents invalid 56 

Deed, warranty as to Utle inserted in 6 ) 

validity inserted in 60 

title, a form illustrating 60 

accrued damages may be transferred by a 

clause in the 6') 

a clause to insert in a deed to a rigiii 5S 

being unrecorded, no suit can be ma1nianie(i . . 91 

Defeat a patent, a printed publication will 23 

Defective specilicatlon corrected by re-issue ^3 

Defence, if the purchaser has sold the interest he can 

setup no 62 

if the instrument is S' aled invalidity can 

not be set up as a 62 

when purchaser of right has no 02 

the provisions of a State law as to patent 

right notes no 62 

Defendant's profits may be recovered 78 

Devising the means for accomplishing a result is in- 
vention 28 

Delaying to apply for a Patent 25 

Delay after secret experiment, regarded as abandon- 
ment 25, 3D 

}naking model 30 

Baltimore, Md. 



124 

Delay in prosecuting infringer will justify couit in 

refusing to enjoin 73 

Delays arc dangerous 118 

Design patents-. 42 

all the provisions of law apply to .... .. 43 

appearances the real essence of 43 

decision of Supreme Court in regard to. 44 
Com of Patents in regard 

to •. 44 

Design, in what may consist the novelty of a 44 

Description in a re-issue must be confined to same 

invention ' 49 

Difference that produces new result is patentable — 23 

Difficulties at the outset no excuse for delay 27 

Diligence, when the question of, arises 27 

an inventor is charged with want of. 28 
Diligent inventor prevails in law over one who de- 
lays 26 

Disclaimer., 50 

who may file oU 

what it must state 51 

effect of 51 

Disclosed, to be meritorious an invention must be... oU 

Distinguishing feature 6S 

Drawings 106 

Duty of patentee to give notice by marking articles. 51 

Employed persons entitled to their inventions 39 

Employees of Patent Office can have no interest in 

patents 20 

Enforcing payment for patent rights 61 

Entitled to patent, if diligent first inventor is 30 

Enjoin, neither part OAvner can 78 

Equitj', infringer's profits may be recovered by suit in. 68 
no change in the jurisdiction of circuit courts 

in 70 

court first determines as to infringement — 73 

Equivalent in a patentable sense 1'; 

a "colorable evasion" is an; 46 

when a thing is not an 46 

if first of its kind it includes all 64 

Escrow 60 

Evade a pateni 67 

Evasions 48 

Examination, preliminary 104 

Execution, a patent can not be sold for debt on 58 

Executor and administrator 41 

Exclusive right to make, to use and to sell 64 

cannot be transferred by one joint 
owner 79 

Mann & Co., Patent Attorneys. 



125 

Experiments regarded as abandoned, when 30 

Experimental use in public for two years ?A 

Explanation of each joint owner's rights 77 

Export business resulting from the patent law 15 

Extensions 115 

Failure to mark articles patented 52 

False representations 62 

Falsely marking articles patented 52 

deceiving the public by 52 

Farmer done less than inventor to promote progress. 15 

Fees, schedule of Patent Office 98 

law requires payment in advance — 98 

of counsel not included in cost 74 

Females may obtain patents 21 

First inventor entitled to patent although competitor 

has one 31 

Final fee, paying ....108 

Foreign patents 116 

when U. S. patent must expire with 

the - 97 

advisable to apply before U. S. patent 

issues 97 

For everybody's advantage, our patent system is 16 

Forfeited, if in public use more than two years 34 

applications, how revived ;55, 36 

Forfeiture clause for non-performance 87 

non-payment may be enforced . • 87 
title remains in assignee until enforce- 
ment of 87 

change in the rule relating to 35 

Form of deed with warranty 60 

for power of attorney to solicitor 114 

Four important things ». 26 

rights possessed by virtue of a patent ?6 

Government must make inventor compensation for 

use 55 

Grant, what is a 87 

Grants should be recorded 90 " 

Grantee, where suit can be brought by 87 

Guarxling the interest of each joint owner ; 80 

Holland, opposers of patents referred to the exajnple 

of 17 

How to determine infringement 65 

obtain patents 103 

Hurtful, patents not granted for anj^thing 22 

Idea, mere prior conception of '.'4 

Baltimore, Md. 



12G 

Identity of purpose ~ 66 

Improvement cannot be included in re-issue 49 

on a patented in venti( ;n 66 

may be employed for any stated use — 88 

Infringed, when a combination is not 67 

patent for a combination is not 6S 

Infringement 6i 

suits 68 

who can bring suit for 68 

a licensee cannot bring suit for 68 

after sale of patent who may sue for 69 

in equity the court determines as to the.74 
no recovery after re-issue can be had for 

prior 49 

it is no defense for non-payment to as- 
sert it is an 61 

to make for one's own personal use is an. 64 
intention has no bearing in a case of — 61 
if an improvement 'colorable evasions" 

onlv are an 65 

how to determine 65 

even if it fulfils additional functions it 

is an 66 

although it contains other features it is 

an ,67 

of combination 46 

searches 65, 116 

Infringer must account for the advantage he derived..75 
if patentee is a manufacturer his profit must 

be paid by 75 

Injunction 72 

provisions 72 

circumstances that will warrant the court 

to issue 73 

will be denied if affidavits as to facts conflict73 
wiil be granted if the public have ac- 
quiesced 73 

will be refused if there is doubt as to Ai^al- 

idity 74 

Intangible right cannot be seized by creditors 57 

Interference is a test suit _. 30 

Interferences , IIO 

Insolvent patentee 59 

Insolvency, assignment is ineffectual if made by a 

court under a State law of 58 

Interest in patents, employees of Patent Office can 

have none 20 

Interest cannot be recovered 75 

Invalidate a patent, a mere prior conception cannot.. 24 

Mann & Co., Patent Attorneys. 



127 

Invalid, where the invention is joint and the patent is 

issued to one it is 40 

what proves a patent for a combination 44 

where the power resides to determine a patent 

is 57 

Invalid patent is not a good consideration 61 

Invalidity cannot be set up if the instrument is sealed. 62 

of State Laws 82 

as a defense for non-payment of royalty — 90 

Invention, a premium upon 9 

what is not 22 

what constitutes an 23 

ruere change of material is not 23 

new result is, evidence of 23 

simplicity of, a great excellence 23 

to devise the means of accomplishing is — 24 
not required by law to be put to actual use.25 
to be meritorious, must be made known — 80 
if kept secret, not entitled to protection — 81 

how to establish the date of 31 

may be used in public before applying for 

patent 32 

in public use more than two years before ap- 
plying 34 

that is abandoned cannot prejudice a patent. 38 

a pirated 55 

made after adjudication in bankruptcy,— po- 
sition of 59 

Inventions should be paid for by the public 13 

employed persons entitled to their own — 39 

made by a workman, decision 40 

may be assigned before they are patented. ..87 
Inventor has done more for country's progress than 

farmer 15 

if diligent prevails over one who delaj's 25 

who delays is wanting in diligence 27 

if prior, may obtain a patent although one 

has issued 29 

who is the prior 30 

first inventor, if diligent, entitled to patent.81 

may avail himself of books, etc 38 

Inventor's ideas, the only way they can be protected.. 10 

Inventors have no right at common law 10 

are a meritorious class 10 

title seventeen years, land squatters forever.l4 

rules as to joint 41 

the originator and one who aids him consid- 
ered joint 41 

Baltimore, Md. 



128 

Joinder of inventors 40 

Joint inventors, Patent Office rule as to 40 

who are considered 41 

must have a patent jointly 40 

Joint owner, an exclusive right cannot be transferred 

by one 79 

Joint owner, manufacturer holding a license from 

one 79 

guarding the interest of each 80 

misconception as to the relation that ex- 
ists between 76 

Joint ownership of patent is common ownership...., 77 

patents ....116 

patentees' rights possibly different from joint 

inventors' 79 

. Judgment, equity court may sell patent to satisfy.... 58 

' Jurisdiction of all patent suits 70 

circuit courts in equity not changed... . 70 

when the suit is on a co utract State court has 71 

Jury's verdict may be increased by the court 95 

Labels to be used for articles of manufacture 95 

meaning of word "print" as appJied to 95 

"label" as applied to 95 

should be registered before use 9fi 

the time registration remains effective 96 

Law, the patentee's loss may be recovered in a suit at. 69 
of partnership, difference between the law of co- 
ownership of a patent and 77 

Laws of States affecting patents unconstitutional — 82 

Levy upon a patented machine, a sheriff -may 58 

License, none required to sell rights 9.3 

fee is the amount of patentee's loss 75 

granted to a manufacturer by one joint owner .79 

whatisa 98 

may be revolted if the conditions are broken. 89 

no terms named 89 

a manufacturer is an infringer if he breaks 

conditions of 89 

not transferable o 89 

using a machine in particular territory under 89 

not required to be recorded 91 

fee is called "royalty" 89 

Licensee cannot bring suit for infringement 68 

when validity of patent can not be a defense 

by 90 

Licensed to use once only 54 

Limitations of actions 71 

State statutes of 72 

repeal of the "six years" clause of 72 

Mann & Co., Patent Attorneys. 



129 

Machine, a sheriff may levy on a patented 85 

sell the material only of a pa- 
tented 59 

although patented, subjected to State taxa- 
tion 85 

licensed for use in particular territory 89 

Make, right to 64 

Males and females of any age may obtain a patent.. 21 
Manufacturer, infringer must pay manufacturer's 

profits if patentee is a -. 75 

where one joint owner grants a license 

to a 79 

who breaks condition of license 89 

Manner of transacting Patent Office business 118 

Marking articles patented 51 

patentee to give notice by 51 

deceiving the public by lalsely.,.. 52 

effect of not 52 

Master-in-Chancery determines the damages in 

equity 74 

Matured invention 24 

Meaning in law of "reduced to practice" 25 

Meritorious invention is one that is disclosed — , — 30 

Mode of operation, same kind of result 6(3 

Models 105 

Monopoly, what is an odious 12 

Nebraska law void — 85 

New matter in a reissue, what is considered 49 

purpose, an old machine used for 23 

adapted to serve, 23 

result evidence of Invention 23 

No excuse for a lack of diligence, difficulties are 28 

Non-payment, a clause of forfeiture may be enforced 

for 87 

when Invalidity is no defense for 62 

performance, a clause of forfeiture for 87 

No recovery can be had after re-issue for infringe- 
ment done before 49 

Notice to be given by marking articles "patented" — 51 
none required to be given before bringing suit. 64 

to all the world, the patent is 64 

Not a patentable combination, what is 44 

an equivalent, when a thing is 46 

confined to the precise arrangement - 66 

defeat h patent, when prior existence of another 

machine will 34 

entitled to protection, who is 3l 

granted for a principle, patents 22 

Not granted for anything hurtful, patents 22 

Baltimore, Md. 



130 

Not invention, what is ., 22 

mere change of material is 23 

to use old machine lor new purpose Is 23 

Note given for a right and a machine 61 

what will not prevent recovery on a 61 

is good even if certain words are omitted 62 

no defense provided by a State law can be pleaded 

against a patent 63 

Notes given for a patent right, State laws as to 83 

decisions as to 82, 84. 

Oath 106 

Obtain patents, males and females of anj'- age may. . . 21 
Officials prohibited from acquiring interest in patents 20 

Old machine for new purpose 28 

Opposers of patents referred to example of Holland . . 17 
Original patent remains in force if re-issue applica- 
tion is refused = 49 

Other features, it is an infringement although it con- 
tains 67 

Ought the Patent law to be chan^ced 18 

Owner, one joint owner cannot enjoin the other 77 

Owners, misconception as to the relation existing be- 
:. tween joint 76 

Patent benefits versus patent burdens 12 

when a printed application will defeat 29 

may be obtained by prior meritorious inven- 
tor, although one has issued 29 

■ length of time an invention may be used be-? 

fore applying for 34 

when the existence of another machine will 

not defeat a : 34 

rendered void by a single sale two 5'ears before 85 
cannot be prejudiced by an abandoned inven- 
tion ; , 37 

is invalid if issued to only one joint inventor. 41 

may be obtained by administrator 41 

for a combination, what proves invalid a 44 

wiien infringed 46 

Government makes compensation for use of.. 55 
is private property and entitled to protection 55 

forcibly revoked, an Instance of a 55 

cannot be annulled by scire facias 56 

Attorney-G-eneral cannot bring a bill to re- 
peal a 56 

where the power resides to decree invalid — 56 

the appropriate proceeding for vacating 57 

cannot be sold on execution for a debt 57 

Mann & Co., Patent Solicitors. 



131 

Patent what does not pass the title to 58 

a sherifl cannot sell the right of a 58 

a caution regarding the payment for a 60 

is notice to all the world 6i 

scope of a 65 

the claim is the vital part of a , 65 

anyone may evade if he can 67 

the true way to construe a 67 

owned jointly is property in common 77 

Patentable, a difference that produces a new result is 24 

Patentability, opinion as to 103 

Patent article, when it ceases to be protected 54 

subject to State taxation 54 

how purchaser may deal with 58 

Patented, slight changes in a machine may be 24 

where the same thing has been twice 51 

machine, a sheriff may levy upon 58 

sell material of.. 58 

invention, improvements on 66 

what may be 103 

Patentee not required to put his invention into use. . 25 
a court may require an assignment to be 

made by 59 

may bring suit for past infringement after 

his patent is sold 69 

Patent law encouragement to inventors. 9 

ought it to be changed 18 

complaints against the 12 

large export business resulting from the 15 

U. S. gaining trade supremacy under 16 

Switzerland just adopting a 16 

Patent Office employees can have no interest in 

patents 20 

how it decides the rights of contesting 

parties 27 

decision on inventions made by em- 
ployee 39 

fees payable in advance 98 

Patent owner may parcel out the patent privilege. , . 88 

Patent process 24 

Patent rights. State laws cannot effect a note given 

for a 63 

Patent system 9 

not for a favored class — for everybody 16 

Patents not an oppressive monopoly 12 

the oi)ly country that has abolished 16 

Holland as an example for opposers of 17 

may be obtained by males and females of 

any age 21 

not granted for a principle 22 

Baltimore, Md. 



132 

Patent not granted for anything hurtful 22 

for designs 42, 111 

all the provisions of law apply to 43 

combinations 44 

labels and prints li;i 

can be regulated only by Congress 81 

a national matter SI 

invite capital... 19 

States formerly granted 81 

have no power to regulate sale of 81 

how to obtain 103 

Parties who may sue < .70 

Partnership does not necessarily exist between co- 
owners 76 

Partnership, difference between co-ownership and.... 77 
Part owner, one part owner not liable for losses made 

by another 76 

is liable for infringement . . 78 

Part owners may each exercise the rights without 

liability to account to the other 77 

Pay for rights, safe way to 61 

Paying final fees 108 

Personal use, it is an infringement to make for one's 61 

Pirated invention 55 

Power of attorney, form for 114 

Preventing the violation of patent 72 

Preliminary examination 104 

Principle, patents not granted for a 22 

Printed publication, when it will defeat a patent or 

an application 28 

Prior conception cannot invalidate a patent 25 

inventor may obtain a patent although one has 

issued 29 

inventor, who is the 30 

existence of a machine cannot defeat a patent. 

when ^., 31 

assignment, purchaser ^vho has notice of 91 

Priority of invention 29 

Process, patent for a 24, 6S 

Proceeding for annuling a patent 57 

Progress of country due to inventor, more than farmer 15 
Protected, the only way an inventor's ideas can be.. . . 10 

when a patent article ceases to be 53 

Protection not given to secret invention ! 81 

patent is private property, entitled to 55 

Prosecute a suit in the courts, who may 86 

Provisional injunction 79 

Mann & Co., Patent Attorneys. 



133 

Public should pay for new inventions 13 

acquiescence will warrant the grant of injunc- 
tion •••• 73 

Purchased from one authorized to sell 53 

Purchaser may use article anywhere — 5», S7 

Purchaser's rights before patent issues^ 51 

Purpose, an old machine adapted to serve a new 22 

. Question of rea9»:)nable diligence, when it arises 26 

Real estate, analogy between joint interest in patent 

and right of way over 7S 

Reasonable diligence 27 

Record of date of invention '. :J8 

Recording 9» 

Recorded, when assignments should be — 90 

Recoupment never pleaded in bar to a suit 09 

the violation of contract may be availed 

of by way of 61' 

Recover damages, two ways to R'i 

patentee may bring suit affer the 

sale of patent to 69 

Recovered, defendant's profits and plaintiff's dam- 
ages may be 72 

Reduction^of invention to practice 24 

what is meant In 

law by 24 

Re-issue of defective patents 47, 111 

is to correct a defective specification 47 

the actual invention first shown may be 

claimed in a 48 

improvements cannot be included in a 4S 

description must be confined to same inven- 
tion in a 48 

what is considered a new matter in a 49 

no recovery can be had for infringement 

done prior to 49-- 

a decision changing law of 50 

Re-issued, number of times a patsnt may be 49 

after judgement Is rendered ..49 

Rejected cases 118 

Relation that exist between joint owners 7(j 

Remedy when the claim covers more than it should.. 50 

Result, if new, is evidence of invention 31 

implies a patentable difference 21 

to invent, is to devise the means for accom- 
plishing a 21 

Restricted, use of patent article may be 53 

Revived, how forfeited applications may be 35 

Baltimore, Md. 



134 

Revised Statutes, when adopted 72 

Revoked, an instance of a patent being forcibly 5t> 

Revokable, if no terms are named a license is 89 

Right, a sheriff in possession of patent cannot sell the 58 

a safe way to pay a 60 

no license required to sella 6"i 

to be an assignment, it must pass all the 8(1 

title and interest 87 

to convey the right to others 88 

use and sell article, but not (he right to 

manufacture 89 

Rights of employer and workman 39 

at common law, inventors have none lU 

of con testing parties, how decided 27 

explanation of each co-owner's '. 77 

either part owner may exercise all the, 77 

of joint inventors possibly diflerent from cer- 
tain joint patentees' , 79 

which the patent vests . 86 

Royalty is a special duty or fee 69 

Safe way to pay for a right. ; . . . 50 

Sale of article two j'^ears before oatent issues fatal — :i5 

Sale of patents, attempts of States to regulate SI 

States have no shadow of right to 

regulate 82 

Same thing, where there are two patents for the 57 

Scire facias, patent cannot be annuled by 56 

Scope of a patent (io 

Schedule of Patent Office fees 98 

Secret, effect of keeping invention ;5i 

Seal, invaliditj^ cannot be set up as a defense if suit is 

on a contract under 62 

Sell, exclusive right to 61 

rights, no license required to 6H 

Sheriff cannot sell the right 5;-5 

may levy on a patented machine 58 

sell the material of a patented machine. . 58 

Simplicity of invention a great excellence 

Skilled aid to effect an invention... . 

iSold on execution for a debt, a patent cannot be 58 

letters patent in possession of a sheriff cannot be 55 
no defense for non-payment can be set up if the 

interest bought has been 62 

suit may be brought for past infringement after 

patent is 69 

Special information 117 

State laws 81 ! 

no authority for cin uduiinJSLrator 42 | 

of insolvenc.v, effect on assigning patents 58 

Mann & Co., Patent Attorneys, 



135 

State Laws cannot affect a note given for a patent 63 

of limitation are applicable 72 

regulating the sale of patents 81 

unconstitutional 82 

regarding promissory notes S2 

State license to sell rights 6o 

taxation, a patent article is subject to 54 

courts 71 

State courts may incidentally inquire into the valid- 
ity of patents.. ' 71 

Stolen invention 55 

Subsequent purchaser 91 

Sue for infringement, administrator may 42 

Suggestions to a person about to buy a patent 59 

Suit to determine the rightful invent -r, interference 

is a 30 

for infringement, who can bring 6S, 70 

a licensee cannot bring 6S 

recoupment never pleaded in bar to a suit 69 

one holding an assignment or a grant ixiay pros- 
ecute 86 

where a grantee can bring 87 

cannot be maintained if deed is unrecorded 91 

no notice required before ])ringing 64 

what courts have jurisdiction of patent 70 

when State courts have jurisdiction 71 

State laws Cannot limit the time for bringing. . . 71 
Supreme Court decision on inventions made by em- 
ployed persons 39 

regarding design patents — 42 

on trade marks 93 

Switzerland just adopting a patent law 16 

Taxation, patent article is subject to State 54, 85 

Terms for preventing the violation of patent 72 

Territorial right held under a restriction 87 

where the owner has broadest title 

to 87 

clause to insert in a deed to 8« 

Test suit, an interference is a 30 

The Patent system 9 

law 20 

rights of a purchaser of a ijatented article 53 

Government cannot use a patent 55 

law- tenants in common 77 

Three months, defer payment 61) 

Time required to obtain a patent 180 

Title of inventor to his right compared to title of land 

squatter 14 

Baltimore, Md, 



136 



Title of wari-anty as to 60 ' 

remains in assignee until enforcement of forfeit- 
ure / 87 

to patent in the broadest sense 87 

Trade-marks , 92 

old law unconstitutional 1)1 

new law 94 

Trade-mark, affixing to goods a fraudulent — 

at common law is unlimited in time.... 92 

has no boundaries 92 

benefits of act of 1870 extended to whom 92 
no change by new law in essentials of. . 92 

adoption is the basis of right to 9;j 

invention has nothing to do with 92 

what is a lawful 9;; 

must be arbitrary ; 03 

is registered for thirty years 93 

ceasing to use is relinquishing riglit to. 93 
descriptive work cannot be registered as 96 
a mark that would mislead cannot be 

registered as a 94 

what no one can appropriate as a 93 

what constitutes infringement of 91 

decision of Supreme Court on 94 

Trade supremacy, the United States now gaining 15 

Transferable, a license is not 89 

Transfer of an interest should be guarded 91 >• 

True way to construe a patent » 67 

Two years' public use 34 

forfeits rignt to patent 31 

use in public, merely experimental 34 

before applying for patent, sale of article.. 3.5v. 
Two patents for the same thing 57' 

Undivided interest 76 

Unqualified monopoly, the conveyance is a mei-e li- 
cense unless it passes the 89 

Unreasonable delay in prosecuting infrhiger 73 

IJse, patentee not required to put invention to 2") 

of invention two yea»s in public before applying 3 

the right to c 

an invention may be employed for a stated r. 

Used in public, meaning of 

anywhere, an article bona-fidely purchased may 
be ....53, f 

Using an old machine for new purpose i ; 

Vacating a patent, proceeding for 57 

Mann & Co., Patent Attorneys. 



137 

Validity, warranty in the deed as to 60 

a State court may incidentally inquire into 

the 71 

Various items 117 

ways to parcel out the patent privilege 88 

Violation ot patent 73 

Want of diligence, when inventor will be charged 

with 27 

Warranty as to title to patent 60 

Warranty as to title, form of..... 6? 

validity — 

What is invention 22 

inventions are patentable 22 

is not patentable 22 

maybe patented 103 

Where suits must be brought — 

When no infringement 67 

Who may obtain patents 21 

Words "given for a patent right" not required on a 

note 63 

Workmen, decision as to inventions made by 39 



O 



Baltimore, Ma. 



I 



LIBRARY OF CONGRESS 



030 016 956 9] 



